The new Lithuanian law on trademarks: 4 main changes
The New Year brought some novelties to the Trademark Law of the Republic of Lithuania: since 1 January 2019, the trademark registration procedure has been substantially unified with the European Union (EU) trademark registration procedure.
The main changes in the law are related to the concept of the mark, the registration procedure, fees and the mandatory pre-litigation procedure. Inga Lukauskienė, associated partner of the professional association of defence lawyers Žabolienė & Partners METIDA, attorney-at-law, patent attorney, and court mediator, provides a more explicit comment on them. According to her, these changes to the law will force both the lawyers and trademark applicants to be more attentive, but the unification of the requirements and procedures should only be beneficial in the long run.
- The concept of the mark: wider possibilities for the registration of a trademark
The old Law on Trademarks provided that a trademark is any mark intended to distinguish the goods or services of one person from the goods or services of another person, which can also be represented graphically. Accordingly, on the basis of such a definition, it was only possible to register trademarks which can be represented graphically: words, drawings, emblems, colours, and shapes.
The new law has fundamentally changed the notion of the trademark by withdrawing the graphic representation of the mark. Of course, this does not mean that something intangible can be registered as a trademark, since the second requirement is replaced by the condition that such a mark may be placed in the register so that the competent authorities and the public can clearly and accurately identify the object of protection which is provided to the proprietor of the mark. This wording has opened up a wide range of opportunities for registering a sound, melody, positional and moving signs and multimedia objects as trademarks.
Until now, Lithuanian applicants have used this possibility when registering EU trade marks, but from now on, if protection is only needed in Lithuania, this possibility will be available without seeking a wide territorial protection and thus saving a significant difference between the EU and national trademark registration costs.
- Registration procedure: urgent examination, comments from third parties, opposition against the application
A fundamental change: after the trademark successfully passes the examination, the application will be published in the official bulletin of the State Patent Bureau (SPB), providing the opportunity to submit oppositions. The trademark will be registered only if there are no oppositions submitted or they are rejected. Under the same scheme EU trademarks are registered, so the proprietors of Lithuanian national trademarks should no longer have questions as to why an opposition can be received later, after the trademark successfully passes the examination and is entered in the register and it seems that the trademark registration procedure is already completed.
The said change will also affect the rights of the trademark proprietor. If, under the old law, even after protest against the registration of the mark, the proprietor of the mark could apply to the court for a breach of his rights, the new law would allow the court to apply only if the opposition was rejected or terminated and the trademark was registered. Of course, the question may arise as to whether this will make it possible for an unfair competitor / potential infringer to abuse this provision of the law and to oppose a trademark, thereby preventing the trademark proprietor from defending his infringed rights. However, hypothetically, in such a case, the possible legal basis – non-compliance with absolute requirements or unfair intentions – cannot be the basis for the opposition.
However, there is a novelty in the law – the comments from third parties that can be made during the examination of a trademark or if an opposition is submitted – before the decision on its submission, but they can only be made on absolute grounds, and in any case cannot be based on unfair intentions.
On the other hand, such a change to the registration procedure should lead to a faster registration process, as the trademark examination would simply announce the trademark application without waiting for the applicant to pay the registration fee. If there is an urgent need to take action to protect the trademark, the law provides for the novelty of asking for an urgent examination of the mark without the need to justify such a request.
The new law also contains other very important amendments related to the terms: all terms related to the examination have been shortened by 1 month, i.e. the applications for both repeated examinations and appeals will be admitted not within 3 months, but only within 2 months. However, there will remain a possibility to extend these terms, but only by one month, not two. The time limit for appealing the decisions of the Appeals Division of the SPB is also shortened – it has been reduced by half since the previous 6 months.
- Fees: a single fee principle comes into force
Due to the changes in the trademark registration procedure, the fees will change accordingly. Since trademarks will be registered when the opposition period expires or oppositions are rejected, the registration fee has been eliminated: one fee will be paid upon application. Of course, it was often the case that, even after the decision to register the trademark, the applicants decided not to register it. There have been cases, when the trademark applicant’s contact details had changed and he simply did not receive a notice about the decision to register the mark. Also, it is no secret that the trademark applications used to be submitted only for the purpose of obtaining a permit for the sign when it was intended to use non-Lithuanian words. Thus, the principle of a single fee will eliminate such situations.
Of course, the fees associated with the trademark registration procedure did not decrease, but rather increased: the cost of registering a trademark increased by 30 percent, up to 180 euro, the renewal of the trademark registration increased more than twice (180 euro), but the trademark transfer fee decreased by 30 percent. In addition, some changes – the trademark proprietor’s address and the patent attorney – will now be registered by the SPB for free. The possibility to ask for an urgent examination of the trademark without providing any arguments will now also be paid, it will be performed for 150 euro. On the other hand, it should not be forgotten that fees applied before the New Year had been in force since 2001, so their increase was objectively determined by economic factors. However, even with the change of fees, the national trademark application fee remains much lower than the EU trademark application fee -180 euro (It is 850 euro for EU trademark).
- Mandatory pre-litigation procedure
The new law will, at least at the initial stage, simplify the examination of invalidity and revocation of trademark registrations, as the new law establishes a mandatory pre-trial procedure for dealing with such disputes with the appropriate requirements through the Appeals Division of the SPB. Although the stamp duty for such applications is higher than the stamp duty for the claim in question, the SPB is likely to be more consistent with both the European Union Intellectual Property Office (ESINT) and the case law of Court of Justice of the European Union (CJEU). On the other hand, the law provides for the possibility of appealing against the decisions of the Appeals Division of the SPB in any case, as provided for in the previous version of the law.
It should be noted that the analogous model also applies to disputes over an EU trademark.