Judgements of the Courts of the Republic of Lithuania
Similarity of the marks does not constitute sufficient ground for finding bad faith
By 6 January 2016 ruling in the civil case No 3K-3-57-611/2016 the Supreme Court of Lithuania has rejected the cassation lodged by the defendant, i.e. the private limited liability company Simatika, in the proceedings concerning annulment of the decision of the State Patent Bureau, satisfaction of the opposition instituted according to the action of the plaintiff, i.e. the German company Siemens AG, against the defendant, i.e. the private limited liability company Simatika, third party concerned State Patent Bureau.
The Supreme Court of Lithuania has accepted the assessment made by the lower courts that the compared trademarks are confusingly similar, since they analysed the components of the compared trademarks, their distinctive characteristics and dominant elements and provided the assessment of their similarity taking into account the identity and similarity of the goods and services for the designation of which the marks have been registered. The factual circumstances of the case were properly qualified and interpreted according to the provisions of Article 7(1)(2) of the Law on Trademarks.
Nevertheless, the chamber of judges has found that when considering the legal relations between the parties to the proceedings the courts that adjudicated the case unreasonably decided on unfair intentions of the defendant in filing an application for registration of the contested trademark and improperly interpreted and applied Article 7(3) of the Law on Trademarks. The circumstances of the case and provided evidence do not constitute grounds for concluding that when filing the contested trademark application the defendant acted in a bad faith and the similarity of the compared trademarks alone does not constitute grounds for finding its bad faith. However, the afore-mentioned infringements do not constitute a basis for declaring the ruling appealed against unlawful and annul it, since earlier it was stated that the plaintiff’s pleas were reasonably satisfied by the courts on the basis provided for in Article 7(1)(2) of the Law on Trademarks.
Copyright to the mark belong not to the user of the mark, but to the person that has signed the agreement
On 24 March 2016, the Court of Appeal of Lithuania partially satisfied the appeal lodged by the plaintiff, i.e. public establishment Penkta Koja, in the civil case No 2A-138-407/2016 opened according to the action concerning the right to the business name of the legal person, infringement of copyright and unfair competition actions brought by the plaintiff public establishment Penkta Koja, against the defendants, i.e. the public establishment Penkta Koja Projektai and P. B. (natural person).The Court of Appeal of Lithuania has not accepted the conclusion of the court of first instance that the business names of the legal persons Penkta Koja and Penkta Koja Projektai are not misleading.
According to the chamber of judges, contrary to the decision made by the court of first instance, in this case, the phrase “penkta koja” (in Engl. Fifths leg) is the dominating element of the business names of both legal entities with strong identification function. Not the generic word “projektai” (in Engl. Projects), but namely this symbolic phrase “penkta koja” is dominant and discloses the substance of the business name of the legal person, meanwhile the word “projektai” has a weak distinctive character.
The court has also determined that, in principle, the operational objectives of both institutions are the same, i.e. taking care of homeless dogs and cats, uniting people who care about homeless and disadvantaged animals, promoting mutual cooperation and willingness to help among human community. Even though, according to the chamber, performance of the same activities and the dominant element in the business names of both institutions mislead the public, the court has rejected the part of the appeal concerning infringement of the copyright. By rejecting the afore-mentioned plea the court of first instance has decided that the interests to the logo belongs to the defendant P. B., since namely the defendant concluded an agreement for transfer of the copyright with the author of the logo and, according to the agreement, the author of the work (logo Penkta Koja LLLLL) G. B. transferred the copyright to the defendant P. B. The case contains no data that the defendant P. B. transferred the copyright to the work to the plaintiff, the plaintiff has not argued this circumstance.
The court considered that the fact that the logo was used in the activities of the plaintiff Penkta Koja per se did not suggest that the copyright to the contested logo belonged to the plaintiff. In the case in question, the fact that the plaintiff used the afore-mentioned logo in its activities and the defendant P. B. has not brought any claims is the result of the circumstance that the defendant P. B. as the owner of the copyright to the logo was one of incorporators of the public establishment Penkta Koja. Nevertheless, this circumstance (that the defendant P. B. permitted use of the logo gratuitously in the plaintiff’s activities does not rebut his copyright to the logo and, thus, does not prove that the rights to the logo were acquired by the plaintiff itself.
Thus, in this situation, a collision exists, i.e. the defendant is not entitled to use the business name with the phrase “Penkta koja”, but it still has the right to use the trademark with such verbal part.
An exclusive right to the business name of the legal person: only from the date of filing an application for registration of legal entity
By 1 April 2016 ruling in the civil case No 2A-287-267/2016 Šiauliai Regional Court has dismissed the appeal filed by the plaintiff, i.e. small partnership Grožio Valandėlė, according to the action concerning infringement of the right to the business name of the legal person brought by the plaintiff small partnership Grožio Valandėlė against the defendant Ž. A. (natural person).
The court has ruled that temporary inclusion of the business name of the legal person being incorporated in the Register of Legal Entities does not grant the rights provided for in Article 2.42(2) of the Civil Code of the Republic of Lithuania to the person that files an application or future legal person (that has not been incorporated yet), since the business name of a legal person shall be protected from the date of filing an application for registration of the legal person to the Register of Legal Entities or from the date of adoption of the legal act if Article 2.46(3) of this Code applies.
The material of the case confirms that the defendant applied for registration of the trademark Grožio valandėlė already on 14 April 2015; thus, it has acquired the right of priority to the trademark Grožio valandėlė; thus, acquiring temporary legal protection. Therefore, the chamber of judges has accepted the conclusion of the court of first instance which adjudicated the case that the defendant which has lawfully used the trademark Grožio valandėlė since 14 April 2015 has not infringed the right of the legal person small partnership Grožio Valandėlė to the business name of the legal name registered by the plaintiff on 13 May 2015 although such business name was reserved on 7 April 2015.
The fact that on 30 September 2015 the plaintiff filed a trademark application does not rebut the fact that priority to the business name Grožio Valandėlė belongs not to the plaintiff, but to the defendant. Thus, although the plaintiff has a registered legal person the business name of which coincides with the trademark registered by it, it does not eliminate the defendant’s rights to the contested trademark and does not contradict the fact that the defendant applied for registration of the trademark earlier than the small partnership Grožio valandėlė was registered.
Prepared by the Attorney-at-law Inga Lukauskienė