Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Inga Lukauskiene, an Associated Partner, an Attorney-at-Law and a Patent Attorney in METIDA
Non-traditional trademarks in IP law are considered to be consisting only of sounds, colours, smells or tastes. However, entering such trademarks into the market or the mind of a consumer could be a long and expensive process. Probably, due to these reasons manufacturers or service providers usually opt for simpler and more ordinary representations for their trademarks that could be familiar to consumers. Yet, it is questionable whether such decision is plausible and whether it is worth going after the exclusive rights for such marks when registering them as trademarks.
49 national trademarks containing Lithuanian words “klasika” (“classics”), “klasikinis” (“classic” used with masculine nouns) or “klasikinė” (“classic” used with feminine nouns) can be found in the Register of Trademarks of the Republic of Lithuania. Yet, not all of these trademarks are under the legal protection. In other words, trademarks consisting only of words and lacking any graphic elements are not registered. On the other hand, even registered “classic” trademarks are not always guaranteed to receive exlusive rigths.
According to the Law on Trademarks of the Republic of Lithuania, a mark may not be constituted of elements which are ineligible for registration as separate (independent) marks. If a trademark contains such elements and if it is assumed that the registration of such trademark might make its scope of protection ambiguous, the protection of such elements may be rejected based on applicant’s or proprietor’s requests and decisions by the State Patent Bureau or court.
When trying cases in the Supreme Court of the Republic of Lithuania that are related with trademark registration, its use or legal protection, the protection of a verbal element in a litigious trademark can be debated without questioning the validity of the whole trademark if that verbal element does not meet the absolute requirements of trademark registrability. The Court of Appeal of Lithuania decided that the element “klasikinis” of a trademark “Klasikinis briutas”, which belongs to AB Alita, does not have any distinctive features and is of a descripitive character, after having assessed its possibility to be registered as a seperate (independent) mark. The court stated that such mark does not meet a condition presented in the Law of Trademarks, as it cannot be registered as an independent trademark.
Similar grounds of refusal could be applied for trademarks, such as ‘tradicinis’ that means “traditional” (28 national trademarks and applications), “ypatingas” that could be translated as ‘special’ (11 national trademarks and applications) or “populiarusis” that would mean “popular” (13 national trademarks and applications).
The analogous situation could be found within the Communiy trademarks. According to the regulations on the Community trademark, an applicant may be asked to refuse his/her exclusive rights to an element which has not got any distinctive characters if its appearance in a trademark might question the scope of protection of that trademark.
The Boards of Appeal of OHIM announced that consumers would understand a word “classic” used for dental instruments, dental implants, dentures and etc. as a reference to the goods of high quality. In addition, both ordinary consumers and the ones from specific professional fields will have the same semantic perception on this word.
Thus, a mark explicitly conveys an unambiguous information on the quality of goods that it represents. Due to this reason, it could be understood that a mark lacking any additional elements which could be identified as a creative and unusual sign only refers to the types or purposes of goods. Such mark neither refers to a concrete commercial origin of goods, nor functions as a trademark. As a result, such mark cannot be registered.
However, even in “traditional” trademark cases “non-traditional” protection could be applied. In other words, if it was possible to prove that a questionable mark of a descriptive character had gained a distinctive feature within its use in the market, that mark could be recognised as a trademark, could be registered and its registration would be valid. A distinctive feature of such mark is determined based on its popularity in a society. Also, such circumstances cannot be associated with the reputation of the mark.