Author: Inga Lukauskiene, Associated Partner, Attorney-at-law, Patent Attorney at METIDA, Court Mediator
Probably nobody doubts that for buyers to make a note of a trade mark, it must be not only visually appealing, but also have a specific meaning. But it is a rather complicated task for marketing specialists and trade mark creators as in creation of a mark one should not forget that it cannot be similar, all the more so – identical, to already existing marks.
The contemporary trends in trade mark formation show that Lithuanian companies often form trade marks by choosing foreign or artificial words as their verbal part – such a trend is natural, especially for companies that seek to export their goods. This entails a higher risk of problems and losing a trade mark than if the entity chose a Lithuanian word as its trade mark.
Such a situation has been recently faced by a successfully growing Venta Windows UAB, the trade mark VENTA WINDOWS of which was opposed by the Danish company VKR Holding A/S that Lithuanian consumers better know under VELUX trade mark. This company also owns the European Union trade marks VELTA, therefore, referring to these marks, the Danish company opposed the registration of trade mark VENTA WINDOWS in Lithuania. The opposition was rejected, as well as the statement of claim for cancellation of the decision of the Appeal Division of the State Patent Bureau of the Republic of Lithuania. The visual difference of the marks, as well as obvious aural differences had an effect on such a decision, however the decisive factor in this case came from the fact that the word VENTA, which is in the trade mark VENTA WINDOWS, is the name of a settlement in Akmenė district and the name of a river. Therefore the word VENTA, differently from earlier trade marks VELTA, had a clear and recognisable meaning, accordingly the marks were recognised to be dissimilar. The court was not convinced by the argument of the plaintiff – the Danish company – that the settlement Venta was not big or that the river Venta was also not particularly long in the territory of Lithuania, as the public opinion survey revealed that over 52 percent of the respondents knew the name. The plaintiff accepted this court decision, thus the trade mark VENTA WINDOWS enjoys lawful protection in Lithuania.
Therefore, in creating trade marks, it is worth thinking also about Lithuanian words, of course, taking into account requirements for a trade mark (for example, a word that denotes goods or services for which the mark is to be registered or their characteristics, etc. cannot be a trade mark). On the other hand, the significance of semantic similarity should not be overlooked also when creating trade marks on the basis of foreign words, as all the trade marks are subject to the same requirements. Still, there are several rules, which can help to avoid problems or even the risk of losing a mark.
First of all, it is advised to avoid registration of a direct translation of an already existing mark as one’s trade mark. On the other hand, this rule has exceptions, too – even in case of a direct translation, a trade mark registration can be preserved if the words are visually and aurally dissimilar, as it happened in the well-known case SHARK v. HAI – though HAI in German and Finnish means “shark”, as “shark” in English, but referring to the fact that the marks could be compared semantically only after translation of the marks, also taking into account that the earlier mark SHARK consisted not only of the word, but also of a visual element, the marks were recognised to be dissimilar.
However in case when it is not necessary to make a translation for semantic comparison of marks – for example, when a mark contains international or frequently used words in a foreign language that consumers know well, visual and aural differences can be insufficient for the marks to be considered dissimilar in overall terms. Namely such a decision was taken by the European Union Intellectual Property Office, when assessing similarity of the trade marks RED BARON and BARON ROJO (“red baron” in Spanish) for Spanish consumers. The trade marks CINCO OCEANOS (“five oceans” in Spanish) and 5 OCEANS were also recognised to be similar in spite of the fact that the opposed trade mark consisted not only of words.
Second, if in the course of creation of a mark it turns out that there is a registered semantically identical mark, it is advisable to modify it by adding more words with an independent meaning – even in case the meanings of the marks were assessed as easily understandable, absence of semantic identity can help to save a trade mark. It was this situation that helped to protect the trade mark GOLDEN BALLS, as in the earlier mark consisting of French words the words BALON and D‘OR were placed in a different sequence – BALON D‘OR, besides the word “ball” was in the plural in the opposed mark.
Thus, even in cases when trade marks use simple words of everyday language or their foreign equivalents, there is a high probability that marks will be recognised semantically similar and even similar in overall terms, unless the marks were particularly dissimilar in visual and aural terms, which often happens when comparing Lithuanian and foreign words.
But in case an earlier trade mark was considered well-known, such semantic similarity can be sufficient for proving connection between the trade marks, thus registration and use of a later mark can become risky.