Author: Inga Lukauskiene, an Associated Partner, an Attorney-at-Law and a Patent Attorney in METIDA
From now on, the 1st of June will be marked in lawyers´ calendars not only as the Day of the Protection of Child Rights but also as the day of a small but significant turning point in intellectual property law as the amendment and supplement to the Law on Trademarks, adopted by the Parliament of the Republic of Lithuania on 8 November 2012, comes into force.
The changes will, first of all, open the way for electronic filing of documents, which will also help to simplify certain parts of the trademark registration process. While the implementation of the possibility of completely electronic filing of applications is still pending, the amendments in question will facilitate filing of applications for trademark registration – it will not be required that a document evidencing payment of the fee be submitted along with the application.
The key point is the objective of switching to an entirely electronic submission of applications and other documents to the State Patent Bureau of the Republic of Lithuania, respectively relinquishing the requirement to provide a document in evidence of the payment of the fee for the services performed by the State Patent Bureau of the Republic of Lithuania. Now, it is already possible to submit certain documents electronically and without presenting the State Patent Bureau of the Republic of Lithuania with the original document certifying the payment of the fee. However, both trademark registration applications and appeals regarding expert assessment on trademark appeals and oppositions are currently admitted exclusively on paper together with the document evidencing the payment of the respective fee.
The applicant will be able to do that within 1 month. Meanwhile, the applicant’s trademark will be subject to interim protection from the application date. On the other hand, a possibility to postpone the payment of the fee will require certain attentiveness from applicants, as in case the fee is not paid in time, the application will be recognised as not filed.
The amendments will also prevent disputes in cases when trademarks contain disclaimers. The Law establishes that a trademark does not have to consist of elements which could not be registered as separate (independent) trademarks – for this reason there were discussions in practice whether a trademark can be registered and protected if it consists only of such elements (that cannot be registered separately). Therefore, the new wording describing a trademark – a mark consisting of elements that are not eligible for registration as separate (independent) marks may be protected only in its entirety where such mark satisfies the remaining requirements of the applicable law – will prevent any discussions on this issue, as it clearly indicates that a trademark can consist only of elements that cannot be protected separately.
The amendments to the Law will also have an effect on the procedure of examination of appeals and oppositions. The new version of the Law on Trademarks of the Republic of Lithuania incorporated the main provisions of the Rules for Examination of Appeals and Oppositions effective already since the beginning of 2010, setting forth that oppositions and appeals are usually examined in writing, in the absence of the trademark applicant (in case of an appeal), interested party or the owner of the opposed trademark (in case of an opposition) or their representatives. However, it is established that in exceptional cases disputes can be examined by oral procedure where the dispute is of a complicated nature or bears significance to the development of the practice of the Division of Appeals.
The changes in the Law will also introduce essential novelties. One of them is that a possibility to ask the State Patent Bureau of the Republic of Lithuania for extension of the time limit for filing of a reply to an opposition for 2 months was annulled. From 1 June 2013, the owner of the opposed trademark will have to manage to do that within 3 months as of the dispatch of the opposition, and the owner of an international registration – within 5 months.
The law will also introduce novelties concerning the use of trademarks. It is known that a trademark (both registered and pending registration) is transferrable to other persons and registered trademarks may be licensed for use by others. However, in practice, the regulation of such rights was either insufficient or encumbering the use of the trademark.
The waiver of the requirement to register the licence is a landmark change. The effective law stipulates that a licence agreement against the third parties comes into force on the date it is entered in the Register of Trademarks of the Republic of Lithuania. Accordingly the validity of a licence agreement is regulated in the section of the law that deals with the licences for the use of international trademarks. In view of international and Lithuanian court practice, this requirement has been removed by the new edition of the law. There have been numerous cases where courts interpreted that licence registration is not a prerequisite to refer to the use of a trademark under a licence in case of a dispute with a third party.
There will be changes in the trademark transfer process, too. A reservation was added to the Law that the right to a trademark cannot be transferred if this action could mislead the public (for example, as to the type, quality or geographic origin of goods and/or services). This also applies in case its owner would have to obtain permission issued under the procedure set by an institution authorised by the Government of the Republic of Lithuania for using the official or traditional (abbreviated) state name, coat of arms, flag or other state heraldic objects, also official signs and hallmarks indicating control and warranty, stamps, medals or marks of distinction. Therefore, the law has been adjusted to include the clause that the right to a pending trademark or a registered trademark may be passed under an agreement in its entirety or in part, together with respective rights that pertain to the activity of a legal entity or separately, except where the transfer of the right to the pending trademark or the registered trademark could lead to the trademark misleading the public as stipulated by the law (for example, as to the type, quality or the geographic origin of the goods and/or services) or where the assignee is not granted the permission or consent (a permission issued in compliance with the procedure of an institution authorised by the Government of the Republic of Lithuania to use the official or traditional (abridged) title of the Republic of Lithuania, coat of arms, flag or other elements of state heraldry, also signs of guarantee and hallmark, stamps, marks of distinction and awards; abridged or full titles of competent institutions of other states or international organisations that authorise the use of the national coat of arms, official control stamps and interstate organisations’ emblems in a trademark).
New notions will be introduced, too, for example, a separate application. “Division” of trademarks has not yet been clearly regulated in practice. The amendments to the Law establish what already exists in practice. As of now, upon the submission of a written application by the applicant or its representative and the payment of the respective fee, an application containing reference to several names of goods and/or services for which the trademark application is pending may be divided into a primary application and a separate application or several separate applications by setting apart the indicated titles of goods and/or services as per applicable rules. Names of goods and/or services specified in a separate application cannot coincide with the names of goods and/or services left in the primary application or specified in other separate applications. A separate application shall be assigned a successive number to the application submitted in the respective year, and upon division of an already registered trademark, the separated part of the registration shall be identified by adding a capital letter to the primary registration number based on an alphabetical order. In case of multiple parts of the registration being separated, each of them shall be identified by a different capital letter in an alphabetical order.
Until now, “division” of a trademark was registered as partial transfer of the rights to the trademark, which was subject to the fee of LTL 400, while a separate application or a separate registration shall cost only LTL 240, as a fee paid for a new trademark application per class (in case of a divided application) or a fee for the registration and publication of a mark and the issuance of the registration certificate (in case of a divided registration).
However, the trademark division is possible only as long as the trademark registration is in effect, but it cannot be divided if the time limit for filing an opposition set in the Law has not yet expired, also for those goods and/or services, regarding which an opposition is filed or regarding which the trademark registration is requested to be recognised invalid or cancelled in court, until the effective date of a relevant decision of the Appeal Division or a court judgement.
Several articles of the Law on Trademarks have dropped the notion of “misleading similarity”, as the said legal rules entitle the owner of an earlier Community trademark to contest the registration of a later trademark for non-similar goods or services, where the earlier trademark has reputation in the European Union. The notion of “misleading” was dropped reasonably because a condition for application of this legal rule is a possibility for gaining unfair advantage or infringing the distinctive character of the earlier Community trademark (an instance of misleading is possible only where goods or services marked by the trademarks are identical or similar).
A new paragraph was added to the Law, based on which the discrimination of a national trademark having reputation only in the Republic of Lithuania will be cancelled and the owner of such a trademark will be given the right to also contest the registration of a later similar trademark for non-similar goods or services, which right is currently given only to the owner of a reputable Community trademark. According to the effective law, the owner of a trademark reputable only in the Republic of Lithuania had the only possibility to defend its rights to the similar trademark registered for non-similar goods or services – the trademark registration can be invalidated if it becomes evident that the applicant filed the application for registration of the trademark in bad faith. Therefore, although similar in essence, but incorporating different legal content, the two grounds based on which a trademark registration is recognised invalid shall be applied more properly with the enforcement of the aforementioned law amendments.
The Law will also be supplemented with other small but important amendments (for example, in case the State Patent Bureau of the Republic of Lithuania refuses to enter changes in the trademark application or the Register of Trademarks due to defects in the request, the applicant or the trademark owner will have a possibility to correct such defects within 1 month), new wordings and corrections of the existing legal rules.