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Ex Parte cases
1)
a. Bional Holding B.V. (NL) filed an appeal with the Appeal Board seeking to
reverse the examiner's refusal to register the mark "SVARI ODA ("clean
skin") in relation to pharmaceutical preparations. The Board found the
mark not-inherently distinctive since it described the purpose of the use of
the preparation. The examiner's decision remained in force and the application
was rejected.
b. Bional Holding B.V. (NL) filed an appeal with the Appeal Board seeking to reverse the examiner's refusal to register the mark ANTISEPTINAS in relation to pharmaceutical preparations. The Board satisfied the appeal and allowed the mark for registration. The decision was motivated by the following considerations. The mark in question is not a word of common language or a term. Visually and phonetically it differs from the word "antiseptics". The mark does not convey any concrete meaning and does not convey any message to the consumer about the particular purpose of use of the goods bearing the mark even by association with the word antiseptics, because antiseptics differ by various purposes of use.
2) McDONALD's CORPORATION (US) filed an appeal with the Appeal Board seeking to reverse the examiner's refusal to register the "Mc" mark in relation to goods in classes 29, 30 and catering services in class 42. The examiner's refusal was motivated by lack of distinctiveness. The applicant submitted evidence in proof of a long use, high reputation and promotion of the applied for mark in relation to fast food services; in Lithuania it had become a symbol of such services. The Board found the mark registrable for catering services in class 42, however the Board supported the examiner's refusal to register the mark in relation to goods in classes 29 and 30.
3) LOGICA PLC (GB) filed an appeal seeking to reverse the examiner's refusal to register the LOGICA mark in relation to goods in classes 9 and 16 and services in classes 37, 38, 42. The examiner's refusal was motivated by lack of distinctiveness: the word had become generic and a commonly used term in science and technology, particularly in computer-related and informatics fields. The applicant argued that the word has more than one meaning, it is used in various fields and the perception of the word differs in different environments. The word is not descriptive of the type or function of the goods and services the marks relates to. For this reason the Board did not support the examiner's opinion that the word had become generic. The opposition was satisfied and the mark was allowed for registration in relation to all goods and services specified in the application.
4) The Lithuanian applicant "Mineraliniai Vandenys" filed an appeal seeking to reverse the examiner's refusal to register the NECTAR mark in relation to goods in class 33.The reason for refusal was the deceptive character of the mark caused by the meaning of the word, namely "fruit beverage" or "flavoured beverage manufactured from plants". Besides, the examiner insisted that similar packing that is often used for non-alcoholic beverages and wines would add to the likelihood of misleading the public. The Board upheld the examiner's decision and refused registration of the mark.
5) FORD MOTOR company filed an appeal seeking to reverse the examiner's refusal to register the "F-series" mark in relation to goods in class 12. The Board upheld the examiner's decision that the word "series" is a commonly used word and should be left free to others, however the mark "F-series" was found distinctive enough to distinguish the goods of one manufacturer from those of others. The mark was allowed for registration with disclamation of the word "series".
6) In its decision the Board upheld the examiner's refusal of registration of the mark FLORA for goods in class 30. The refusal was motivated by the connotation of the word "flora", which makes the mark either descriptive (in relation to "plants") or deceptive (in relation to other goods).
7) The examiner refused to register the mark "ODALISQUE" in the name of a holder from Jordan. With reference to the translation of the word provided in some Lithuanian dictionaries the examiner insisted that the mark was contrary to morality and ethic norms of society. The applicant appealed the decision before the Board. The Board noted that the word originated from the French language and referred to a French dictionary (Nouveau Petit Larousse Illustre) and to the Lithuanian dictionary of international words for interpretation of the meaning of the word. The Board found that the translations provided in some Lithuanian dictionaries did not fully correspond to the original connotation of the word. The Board noted that the word of French origin relating to Moslem culture and traditions would not be contrary to morality and ethic norms. The examiner's decision was reversed and the mark was allowed for registration.
8) The examiner refused to register the mark EXTRAFONAS for telephone apparatus and parts thereof. The refusal was grounded on lack of distinctiveness, the mark being purely descriptive in relation to goods it was applied for. The applicant sought reversal of the examiner's decision before the Appeal Board. The Board applied a relevant provision of the law establishing that a mark shall not registered if it is "exclusively descriptive". Though in that particular case the meaning of two parts of the word ("extra" and "fonas") could be traced to foreign languages and are incorporated into international words, the word as a whole was absent in any dictionaries. It did not describe any characteristics of the goods and did not directly convey any information about the goods. The mark was allowed for registration.
9) The examiner refused to register the mark COLLECTION for alcoholic drinks.
The refusal was grounded on lack of distinctiveness, the mark being purely descriptive.
The applicant sought reversal of the examiner's decision before the Appeal Board.
The Board upheld the examiner's decision. It noted that the word was often used
for high-quality drinks, some manufacturers used it to identify their best products,
which was proved by publications in various sources. The Board found the mark
to be exclusively descriptive about the quality and value of the goods and did
not allow the mark for registration.
10) The examiner refused to register the mark E.U.RO. for goods in class 30 motivating the decision that the mark was devoid of distinctiveness being the name of the European Union currency. The Board agreed with the examiner that the mark would be perceived as meaning "European" and it was unable to distinguish goods manufactured by one manufacturer from goods of others. The word EURO is a commonly achronym for the European monetary unit. The applicant argued that the word was not descriptive with regard to the goods the mark was applied for. The Board rejected this argument because descriptiveness had not been the actual ground for refusal. The appeal was rejected and the mark was not allowed for registration.
11) The examiner refused to register the mark OVERLAND for goods in classes 07 and 12. The refusal was based on the grounds of descriptiveness with regard to on-land transport and deceptiveness with regard to the other goods in the application. The applicant filed an appeal. The appeal was upheld with regard to part of the goods and rejected with regard to the remaining goods. The Board found that the word "overland" is not exclusively descriptive with regard to "vehicles for locomotion by land" and parts for such vehicles and can be allowed for land vehicles. On the other hand, the Board found it deceptive with regard to other vehicles. During the hearing the applicant agreed to limit the specification of goods deleting those for which the mark was deceptive.
11) The examiner refused to register the mark SOSTINE (Lithuanian for "capital"
(city)) for goods in class 29. The first examiner's refusal was motivated by
lack of distinctiveness because it consisted of a generic word. The Applicant
objected to the decision and submitted a motivated response. There was conducted
a re-examination of the mark and again the decision was to refuse registration,
however this time it was motivated by descriptiveness because the mark contained
exclusively information about the place of origin of the goods. The Applicant
filed an appeal. Firstly, the applicant insisted that the examiner's decision
should be reversed, because the first and the second refusals were based on
different grounds. The Board rejected this claim and noted that the Guidelines
for trademark registration did not limit the examiner in stating new grounds
for refusal after re-examination. Besides, applicants reserve the right to appeal
against the examiner's decision. Considering the grounds for refusal the Board
disagreed with the motivation of the first examiner's decision and noted that
in deciding whether a word is a generic term or not regard to be taken of the
goods the mark is being registered for. Though the word "capital"
is a commonly used word it does not name or designate any goods in class 29.
Commenting on the second ground for refusal the Board noted that the word did
not indicate any particular city in a particular country and for that reason
it was not exclusively descriptive as to the place origin of goods. Thus, the
Board reversed both examiner's refusals and the mark was allowed for registration.
1) Soldan Holding + Bonbonspezialitaeten GmbH (DE) opposed to registration of the mark Kinder (Cyrillic) in relation to goods and services in classes 29, 30, 39, 41, 42 in the name of Ferrero S.p.A. (IT). The opponent alleged that the mark was not registrable since it indicated a target sector of consumers, namely children. The opponent also insisted that letters of the Cyrillic alphabet for a German word were a weak distinctive element of the mark. During the hearing the opponent supported the opposition only in relation to goods in classes 29 and 30. The Board found that the mark did not suggest that the goods bearing it were intended exclusively for children because classes 29 and 30 cover various goods and some of them are not intended for children, e.g.: coffee, artificial coffee, etc. The opposition was rejected and registration of the mark remained in force.
2) ROLEKSPA, LT opposed to registration of the mark EVIJA in relation to goods
in classes 5 ("ointments") and goods in class 3. The opponent insisted
that the mark designated a type of ointment with antiseptic characteristics
that had long been produced by various manufacturers under a specific standard.
The Board found that the documentary evidences produced by the opponent could
serve as a technical instruction specifying requirements for the production
process, however the documents did not specify that the mark in question stands
for the name of a type of goods.
The opponent also insisted that since the name of the product had been used
for a particular type of ointment, the mark used for an ointment with another
indication should be considered to be deceptive. The Board rejected this ground
for opposing, noting that the mark "EVIJA" incorporates a coined word
that cannot convey any information about the product, consequently it cannot
be deceptive. The mark EVIJA was allowed for registration.
3) Georgian Wines & Spirits (GE) opposed to registration of the mark TAMADA for alcoholic drinks in the name of a Lithuanian applicant. The opposition was grounded on absolute requirements, namely, misleading about the origin of the goods and contrary to morality, etc.. There was submitted no evidence in proof of dishonest behavior of the applicant and in considering whether registration of the mark was contrary to morality the Board limited itself to the content of the mark. The meaning of word "tamada" of Georgian origin was not found to be contrary to morality. The opposition on this ground was rejected. The opponent submitted evidence in proof that the wine under this name had been being produced by him in Georgia for many years, it could have become known to Lithuanian consumers through use. Besides, the opponent produced evidence that the wine was produced by a special technology from a type of grapes growing in a particular region of Georgia. With consideration to all these circumstances and with regard to the main identifying trademark function the Board found that the opposed mark in the name of a Lithuanian holder would mislead the public as to the origin of the goods, the manufacturer of the wine; the mark would mislead the consumer into thinking that the wine bearing the opposed mark originated from Georgia and would suggest such characteristics that were ensured by the opponent. The opposition was upheld and the opposed registration was invalidated.
4) A local company opposed to registration of the word mark LEADER for alcoholic drinks in the name of another local company, both being engaged inter alia in distribution of alcoholic drinks in the local market. The opposition was based on absolute grounds of the trademark Law, on provisions of Paris Convention and on LR Law on Competition. Firstly, the Board noted that an opposition can only be based on absolute or relative grounds of the national trademark law and left without consideration the opposition based on Paris convention and Law on Competition. Consequently, the opposition was considered only with regard to absolute grounds for refusal specified in the trademark law, namely descriptiveness, deceptiveness, a mark contrary to public order and moral principles. In motivating descriptiveness as a ground for refusal, the opponent insisted that one of the meanings of the word "leader" was "a featured article of trade, esp. one offered at an attractively low price". There was made reference to an English-Lithuanian dictionary that quoted a number of meanings, the eleventh among which was "goods sold at a low price (attractive for buyers)". However the Board noted that the Lithuanian consumer would hardly be aware of that particular meaning of the word. Besides, "leader" is an international word that has an equivalent in Lithuanian and the Lithuanian dictionary of international words does not quote the above meaning. The Board further noted that a modern English-Lithuanian dictionary neither quotes the meaning. Thus, the opposition based on descriptiveness of the opposed mark was rejected.
5) In support of its opposition on the grounds of deceptiveness the opponent noted that the mark registered in the applicant's name could mislead the public because of the existence of the mark "Scottish Leader" in the name of another holder (being not the party to the opposition). With regard to this motivation the Board noted that disputes involving earlier rights of third persons could only be a ground for an opposition on relative and not absolute grounds. Thus, opposition based on the misleading character of the opposed mark was also rejected.
6) The Board also rejected opposition based on the mark being contrary to public
order and morality. The Lithuanian PTO Guidelines establish that this provision
is applicable for marks, the contents of might convey some immoral or contrary
to public order information. Since the word "leader" does not convey
any such information the opposition on this ground was also rejected.
Thus, the opposition was rejected in its totality and the opposed trademark
registration remained in force.
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INTELS-LITHUANIA |