How to sucessfully enforce figurative trade marks containing only descriptive word elements in Latvia

Author: Ruta Olmane, Latvian Trademark and Design Attorney, European Trademark and Design Attorney, Lawyer at METIDA

doubleeeee gerasRecently the Riga Regional Court took a decision in the very interesting dispute between Latvian companies who owned trade marks which dominant elements were purely descriptive words.

Latvian company “RIGA SPIRITS & WINE OUTLET” (hereinafter – the Plaintiff) is the owner of the following trade marks:

Printspiritd and beer

and “SPIRITS & WINE RIGA OUTLET”, which are registered in respect to wholesale and retail sale services of spirits and non-alcoholic drinks and have been used in Latvian market since 2009.

On 2013 the Plaintiff found out that another Latvian company “NEYLON” (hereinafter – the Defendant) registered in his name the following trade marks:

alk.outlet.2geralk.outletttt.3 geras

alk.outlet.1 gerasalko.4jkbjhv

which have been registered and used in respect to identical and similar goods and services.

In September 2014 the Plaintiff brought an action before the Riga Regional Court against the Defendant claiming invalidation of the trademark registrations and oblige the Defendant to terminate and prohibit the unlawful use of the mentioned trademarks in commercial activities.

The Defendant brought a counterclaim against the Plaintiff, requesting invalidation of the trademark registrations due to they consist solely of descriptive elements.

The Riga Regional Court ruled this case in favour of Plaintiff and dismiss the counterclaim of the Defendant.

The core element of the success in this case was obstacles that Plaintiff succeeded to prove that earlier trade marks become well-known in Latvia as a result of extensive advertising activities.

In general it is rather complicated task to prove that a trade mark is well known in Latvia, especially if the case concern national trade marks and especially if the dispute is reviewed before the Court not before the Board of Appeal.

This case was therefore interesting and significant because the Court found earlier trade marks well-known in Latvia in spite of the fact that the Plaintiff used his trademarks only since 2009, when they operated online store and two shops in Riga and one in Liepaja. Due to extensive advertising campaigns and active use of social media, the trade marks became recognized and even well-known in Latvia. More over the Riga Regional Court recognized as well known the non-registered trademark “SPIRITS & WINE”, which Plaintiff extensively used.

The court also acknowledged that the Defendant has applied the contested trademarks in bad faith. Furthermore, the Defendant by using similar trademarks in comparison to the trademarks of the Plaintiff in commercial activities, may cause violation of prohibition of unfair competition in accordance to the Latvian Competition Law.

The Riga Regional Court decided:

  • To oblige the Defendant to cease and prohibit the unlawful use of the contested trademarks in commercial activities, as well as marks that are identical or confusingly similar to the registered trademarks and the non-registered trademark “SPIRITS & WINE” of the Plaintiff, as well confusingly similar reproduction, imitation, translation or transliteration of the trademarks without the permission of the Plaintiff.
  • To invalidate the trademark registrations of the Defendant.
  • To recover the litigation expenses of the Plaintiff.

Currently the decision of the Riga Regional Court is appealed.

 

Advertisements
Šis įrašas paskelbtas kategorijoje Prekių ženklai | Trademarks ir priskirtas tokioms žymoms: , , , . Išsaugokite jo nuorodą.

Parašykite komentarą

Įveskite savo duomenis žemiau arba prisijunkite per socialinį tinklą:

WordPress.com Logo

Jūs komentuojate naudodamiesi savo WordPress.com paskyra. Atsijungti / Keisti )

Twitter picture

Jūs komentuojate naudodamiesi savo Twitter paskyra. Atsijungti / Keisti )

Facebook photo

Jūs komentuojate naudodamiesi savo Facebook paskyra. Atsijungti / Keisti )

Google+ photo

Jūs komentuojate naudodamiesi savo Google+ paskyra. Atsijungti / Keisti )

Connecting to %s