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1) The Lithuanian company INSCRIPTUM opposed to registration of the trademark TechTop in the name of another local company for services in class 35. The opponent did not have an earlier trademark registration and the opponent relied on the provisions of the law that did not allow registration of signs that were identical or similar to "firm names or style and signboards, an industrial design, a work protected by copyright". The opponent submitted documents in proof that he had placed an order for development of a signboard design with the words TECH and TOP and later for manufacture of the signboard for the opponent's shop by another local company. The opponent insisted that the opposed mark infringed his rights for a work protected by copyright. The Board upheld the opposition. It was noted that the opposed mark was composed by the same principle, the word being divided into two parts in different scripts; besides, the opposed mark repeated the combination of red, blue and white colours used for the signboard. The opponent had not given the applicant a permission for registration of the mark. Registration of the opposed mark was invalidated.
2) Scandinavian Airlines System Denmark-Norway-Sweden opposed to registration
of the mark EUROBONUS in the name of a local trader in classes 35, 39, 42. Actually,
the opposition was grounded on relative (confusing similarity to earlier registered
marks (SAS EUROTICKET, SAS EUROCLASS, SAS in class 39) and on absolute grounds,
namely because the opposed mark was capable of misleading the public. After
considering the opposition based on the relative ground the Board did not find
the marks to be confusingly similar and the opposition on this ground was rejected.
However the Board satisfied the opposition based on the misleading character
of the mark. The opponent submitted evidence in proof of the wide use in Lithuania
and in other countries if the sign EUROBONUS as a name of a specific SAS programme
envisaging privileges for passengers often flying by SAS airlines. The Board
noted due to such use "the mark EUROBONUS was inseparable" from the
opponent and would not be able to identify the applicant, consequently the mark
registered in the local trader's name would not be able to fulfill the main
identifying function of a trademark.
3)
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Earlier right
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Opposed Mark
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MACRO
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A German company, claiming its copyright for the sign MACRO filed an opposition against registration of the trademark MACRO in the name of a Lithuanian applicant. The opponent did not have an earlier trademark registration in Lithuania. The mark was a logo incorporating a word presented in a specific lower typeface in a red colour. The opponent insisted that the logo had been created before the opposed trademark application date and that the opponent had never given its consent to the applicant for registration of the sign, belonging to the opponent by copyright. The opposed mark was registered for a broad specification of goods in services in twenty three classes. The opponent submitted a declaration stating that an identical mark had been registered as a Community Trademark. The declaration also provided information about creation of the logo as well as acquisition by the opponent of the rights for the trademark. However, as the Board noted, the declaration did not state that it was the opponent who was the holder of copyright for the logo. Besides, there was neither presented the image of the object of the opponent's copyright. The Board also rejected the opponent's other evidence: annual financial reports, promotional materials, printouts from websites - because they neither proved the circumstances above. The opposition was rejected and the opposed trademark registration remained in force.
4) Grupo Corporativo Teype, ES opposed to registration of the mark PASCUAL
(w.) in the name of a Lithuanian company, being a Lithuanian-Irish JV. The opponent
did not have PASCUAL trademark registrations in Lithuania, however it was the
holder of a number of PASCUAL trademark registrations in other countries. Besides,
goods bearing the opponent's mark had for a number of years been distributed
in Lithuania and the applicant had known about it because it was the applicant
who had acted as the local distributor of the goods. There were submitted invoices
to this effect. The opponent claimed that registration of the trademark was
made in bad faith and based the opposition on absolute grounds of the trademark
law: deceptiveness and a mark contrary to public order and principles of morality
- as well as on relative grounds: renown of the unregistered mark and similarity
to a trade name. Considering the opposition on absolute grounds the Board referred
to the Guidelines for trademark registration and stated that those absolute
grounds were applicable for consideration of the contents of a mark. The contested
word mark, being a Spanish name, did not convey any information that might be
considered to be either deceptive or contrary to morality. The opposition was
also filed on relative grounds. The Board rejected the allegation about similarity
to a well-known mark because renown of the unregistered opponent's mark had
not been proved before the court, as required by the Law. The Board also rejected
the opposition on the grounds of similarity to a trade name because the word
PASCUAL was incorporated into the name of the manufacturer of the goods bearing
the opponent's mark (that had been delivered to the applicant by the manufacturer)
but not into the opponent's name. Thus, the opposition was rejected in its totality.
The PTO decision was appealed before the court, after which the dispute was
settled before the court hearing - the contested mark was assigned to its holder
by a mutual agreement of the parties.
5)
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Opposing Mark
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Opposed Mark
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Everlast World's Boxing Headquarters Corporation opposed to registration of the word-figurative EVERLAST in classes 18, 25, 28 in the name of a Lithuanian company, being a Lithuanian-Danish JV. The opponent did not have an earlier registration in Lithuania. The opposition was filed on absolute (deceptiveness and contrary to morality) and relative (the opponent's trade name) grounds. Considering the absolute grounds the Board noted that the coined word incorporated into the mark did not convey any misleading or immoral information, and the opponent had not submitted evidence in proof of how the Lithuanian consumer would perceive the mark. The evidence in proof of the opponent's registration, use and its reputation of the identical mark worldwide was disregarded. The Board noted that there had not been submitted any evidence in proof of the opponent's use of the mark in Lithuania and that the mark had become known to the Lithuanian consumer before the application date. With regard to the opponent's trade name as a relative ground for opposition the Board again noted that there had not been submitted evidence of the opposing company's activity in Lithuania and that it had become known to the local consumers before the opposed mark application date. The opposition was rejected in its totality. The decision was appealed before the court, after which the applicant withdrew the mark.
6) A local company filed an opposition against registration of the word mark
"O.k" for alcoholic drinks in the name of another local company. The
opposition was based on the grounds based on the Trademark Law, Paris Convention
(articles 10 bis and 10 ter), Lithuanian Constitution, LR Law on Competition.
The Board noted that oppositions could be filed only on provisions of the Trademark
Law and rejected without consideration the opposition based on Paris Convention
and Law on Competition. The opposition was considered only with regard to provisions
of the Trademark Law and Guidelines for Registration of Trademarks: a mark contrary
to morality and public order (absolute ground) and relative (similarity to a
protected design). The absolute ground was rejected because the contents of
the mark consisting of two letters did not convey any immoral information. In
motivating the opposition based on relative grounds the opponent claimed that
earlier it had registered a design - a bottle with the "O.k." label.
The Board noted that the bottle design registration had been invalidated in
an opposition proceeding that was not appealed. For this reason the opposition
based on similarity to a design was rejected without consideration (the said
bottle design was invalidated because the shape of the bottle was found to be
devoid of an "individual character", which could not be remedied by
applying a label to such a bottle).
Thus, the opposition was rejected in its totality and the opposed mark remained
in force.
7) Later the Board considered an opposition between the same parties, however
they exchanged their roles. This time the holder of the word mark "O.k."
(that was opposed in the proceeding above) opposed to registration of the word-figurative
mark O.k (a label, like on the invalidated bottle design) in the name of the
opponent in the previous opposition. The opposition was based on earlier rights
for a similar word mark. The marks were found to be confusingly similar and
the opposed trademark registration (a label) was invalidated.
The above-quoted cases were considered on the basis of the previous trademark law, because it was under that law that applications for the opposed marks had been filed. The law previously in force did not contain bad faith provisions for invalidation of a trademark registration in an opposition proceeding.
The new law, that became applicable to consideration of disputes against marks
filed after January 1, 2001, contains a "bad faith" provision as a
relative ground for invalidation of trademarks. Below we are quoting opposition
cases against marks filed under the new law on the grounds of earlier copyright,
earlier designs, etc. as well as oppositions against bad faith marks.
8)
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Earlier right
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Opposed Mark
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A label with a man's photo and the word
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A local company filed an opposition against registration of two word and device
marks in the name of a Lithuanian-USA JV incorporated under the local law. The
opposed marks represented a label for wine - a man's portrait that reminded
of old-times paintings and the word VYRU VYNAS (Lithuanian for "men's wine")
in a specific (handwritten) typeface, the difference between the opposed marks
was only in colours.. The opponent claimed that the opposed marks were similar
to the opponent's label protected by copyright. The opponent's label also contained
the word "VYRU". The opponent submitted documents in proof of copyright
for its label. Considering similarity of the opposed mark to the opponent's
label the Board noted that the device elements in both were very original, though
unlike the opposed marks, the opponent's label contained a fragment of a photo
(not a painting), thus, the stylistics of the labels was different. Besides,
the dominating colours were also different. The Board found that despite reproduction
of the word, the opposed labels were not similar to the opponent's label protected
by copyright and the opposition was rejected.
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Opposing mark
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Opposed Mark
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VYRU (w) |
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However the opposed registrations finally did not remain in force and some time after the above decision it was invalidated as a result of an opposition filed by another local company on the grounds of similarity of the labels to the registered opponent's earlier word mark VYRU. The Board noted that the opponent's word mark should firstly be compared with the corresponding word element of the opposed marks VYRU VYNAS. The most important word in the opposed mark was the word VYRU ("men's") because the second word just designated the goods ("wine"). Since the device was a portrait of a man it would be perceived just as an illustration of the word and would not change the overall perception of the mark. Based on these considerations the marks were found to be confusingly similar.
9) NINTENDO Co. (JP) opposed to registration of the word mark POKEMON in class
28 in the name of a local holder. Before filing the opposition the opponent
had filed an application for POKEMON (logo) however the opponent's application
was filed later than the opposed mark. The opposition was filed on the following
relative grounds: a) a mark identical with the protected industrial design or
any other object of industrial property, literary, scientific or artistic work
protected under the copyright; and b) bad faith application. In support of these
grounds the opponent submitted evidence in proof that it had created the POKEMON
game conception much earlier than the date of the opposed mark application,
that it was the holder of copyright for the POKEMON computer game. The opponent
also submitted a declaration stating that it had not given its consent to the
applicant for registration of the mark. Based on this motivation and evidence
the Board upheld the opposition on the first ground, however it also considered
the second ground. In doing so the Board made reference to provisions of Paris
Convention and the LR Law on competition. In addition to other evidence in proof
of the opponent's rights, it was also stated that the applicant was not a manufacture
of games but was engaged in their distribution in the local market and that
the applicant had known about the opponent's copyright and other rights in connection
with the POKEMON game. The opposition on the second ground was also upheld.
Actually, it was the first opposition decision in a bad faith case filed on
the grounds provided in the new law.
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INTELS-LITHUANIA |