With the development of innovative technologies, all areas of law are being faced more and more often with new tasks that require a more creative approach in order to be solved, as well as with changes in legislation. Intellectual property is perhaps one of the areas of law that have adapted to this process most quickly. Could a Shazam screenshot be evidence of phonogram misuse? How can musical compositions written by artificial intelligence be protected? How relevant are the established approaches, and how are the boundaries of law enforcement expanding? Read about these subjects and much more in our new overview of intellectual property news from the Baltics and Belarus.
IP news from Belarus
Belarus has joined the Geneva Act on the legal protection of industrial designs
On 9 April 2021 the Act “On Joining the Geneva Act of the Hague Agreement on International Registration of Industrial Designs” was signed in Belarus. The Geneva Act ensures the functioning of the international system of registration and legal protection of industrial designs.
It is expected that the application of the Geneva Act will simplify the procedures for both national and foreign applicants to obtain legal protection for industrial designs in Belarus and maintain patents for them in force simultaneously on the territory of all states that are parties to the Geneva Act.
Apple Inc. became the first company to register an industrial design in Belarus under the Hague System by obtaining legal protection for a remote control design (international registration number DM/216019).
Belarus antimonopoly authority recognised copying product label as unfair competition
Based on the application of a company producing waste bags, the Ministry of Antimonopoly Regulation and Trade of the Republic of Belarus (MART) confirmed that unfair competition had taken place as a result of the creation of confusion due to the copying of a product label (the Decision).
Ending the antimonopoly investigation, which lasted more than a year, the Decision became the second in the history of MART, establishing unfair competition on the basis of imitation of product appearance or product label. The first decision based on a similar violation was issued on 3 December 2020.
This may be a sign of evolving protection of IP rights in Belarus via competition law mechanism.
Protection against trademark piracy may become more effective for foreign companies
At present, it may be challenging for foreign entities to challenge piracy trademark registrations in Belarus using an unfair competition mechanism because this mechanism is relevant only for competitors.
Pursuant to current regulation, competitors are entities selling or purchasing goods on the same commodity market. This applies only to the commodity market of Belarus.
Thus a foreign entity not carrying out activities on the commodity market of Belarus but considering the possibility of starting such activities, finds itself in a situation where its entry into the commodity market of Belarus would initially be considered a violation of intellectual property legislation.
On 10 September 2021, public discussion of the Draft Act “On amendments to the Act “On Countering Monopolistic Activity and the Development of Competition” (Draft Act) ended.
Among other provisions, the Draft Act stipulates a new legal definition of competitors. Pursuant to the Draft Act, competitors are entities selling – or intending to sell – or purchasing goods on the same commodity market.
In our view, such an amendment may allow business entities considering entering the Belarusian market to challenge piracy trademark registrations via an unfair competition mechanism.
Sorainen’s input in Draft Act development
Based on our experience in the sphere of competition, during the public discussion of the Draft Act Sorainen prepared and sent to the responsible state authority a list of suggested amendments to the Draft Act.
Considering possible difficulties related to proving the fact of the intent to sell, Sorainen suggested amending the definition of competitors as follows “competitors are entities selling or intending to sell and (or) purchasing goods in the commodity market or entities whose access to the commodity market is limited due to unfair competition on the part of entities on this commodity market”.
IP news in Latvia
The use of signs indicating the character and quality of goods requires a certain level of public recognition of the company
On 11 June 2021 the Industrial Property Board of Appeal adopted a decision overturning the Patent Office’s decision by which it rejected the registration of the trademark “That is a good one!” (“Tas ir labais!” in Latvian), which according to the Patent Office described only the quality and character of the goods and services to be registered under the trademark. While one trademark was a word mark, the other was a figurative mark, consisting solely of the slogan written in orange letters, without any additional elements.
The applications were filed by a Latvian company specialising in the retail sale of groceries, including foodstuffs and drinks (the Applicant). Registration was applied for both trademarks in Nice Class 35: the retail sale of food products and non-food consumer goods, including hygienic goods, goods for children, goods for domestic animals and household goods.
According to the Patent Office, the ownership of a trademark only gives the trademark owner the right to expect that other persons will not use the mark or similar marks in relation to the same goods and services or those that are very similar. Every member of society should have the opportunity to advertise their goods and services and promote their best qualities. Thus, a single trademark owner should not have monopoly rights to a designation that is necessary for other members of society.
The Applicant explained that “The Good One” (“Labais” in Latvian) is the brand of its retail stores and that it has already been registered as a figurative trademark and has been in use for a period of over 10 years. The Applicant also indicated that it has systematically invested its resources into popularising the brand: by creating a website, producing advertisements and brochures incorporating its name and the slogan in question, and purchasing a license for a song that has the title of their brand. These were presented as grounds for consumers being able to distinguish the Applicant’s trademark from others.
The Board of Appeal referred to the previous statements by the Court of Justice of the European Union that it is not prohibited to register trademarks consisting of slogans or statements about quality, or of other statements that invite consumers to purchase goods and services.
The Board of Appeal also concluded that the slogan “That is a good one!” is not an ordinary statement that provides information on the quality of goods and services. Although the word “good” is often used to describe the quality and price of different goods and services in advertising materials, the slogan in question does not explicitly state “That is good!”. Instead, the slogan is “That is a good one!”, which is a slang phrase in modern Latvian. Furthermore, in slang this phrase can have both positive and negative meanings, depending on the content of the conversation and on the intonation.
As a result the Board of Appeal allowed the registration of both of the Applicant’s trademarks.
What can we learn from this case?
An important aspect when registering a trademark is how widely recognised it is. Unregistered trademarks that are well-known to the public have a higher chance of being registered in the future. Even if the trademark consists of some terms or slogans that could otherwise be seen as non-distinctive or descriptive, the familiarity of the trademark may be a helpful factor.
Registration is less likely to be refused on the basis of absolute grounds of refusal if trademarks involve creative graphic design and use of language: for example, if the trademark is not distinctive in relation to the goods and services it has been applied for.
Dispute over an image of a running deer between GAZ and Deere & Company
On 23 September 2021 the Industrial Property Board of Appeal adopted a decision during opposition proceedings related to an attempt to register a trademark displaying the silhouette of a running deer. The registration application was submitted by the public joint stock company GAZ, which is a vehicle manufacturer in Russia. The opposition was initiated by the United States joint stock company Deere & Company, which is primarily known for manufacturing agricultural machinery.
Deere & Company trademark
The applications for both of the trademarks were for a wide range of goods and services related to the manufacture of vehicles and their parts or to agricultural and industrial machinery. Consequently, the Board of Appeal recognised that the goods and services relate to a very broad public which has different levels of knowledge about the market in which both parties in the dispute are operating.
An important detail in deciding the case was that the Deere & Company trademark had been registered as a European Union trademark since 27 June 2000, while the GAZ trademark was submitted for registration in Latvia only on 18 June 2020. Registration of a European Union trademark applies to the territory of Latvia as well. Therefore, the trademarks were not only similar, but one of them was registered significantly earlier.
The Board of Appeal concluded that the opposed trademark is very similar to the earlier mark. Thus, there is a high probability that the consumers will not be able to see a clear distinction between the two marks or will identify them as somehow related.
As a result of this, the opposition claim was successful and registration of the GAZ trademark was refused.
What can we learn from this case?
This case is a great example of why it is important to conduct trademark searches in national databases and the database of the European Union Intellectual Property Office before deciding to register a trademark. If a trademark application has a close similarity to an already registered trademark, it is most likely that the application will be refused on basis of the rights of the earlier trademark.
It is also worth noting that by applying for a European Union trademark registration, a single registration means that protection applies in all European Union member states.
How will Latvia protect AI-created works?
Artificial intelligence (AI) plays an increasingly significant role in our daily life; its advancement seems to be unstoppable. Think, for instance, of a virtual assistant at the Company Register or a Spotify algorithm that selects music depending on the listener’s taste. Music or paintings created by algorithms can be equal in terms of quality to those created by a human. A “Nirvana” song, “Smother”, “written” by AI will take your breath away. When composing this piece, the algorithm analysed Nirvana’s lyrics, Kurt Cobain’s voice and the sounds of the group’s instruments.
An important feature of AI is its ability to collect data, learn, and make decisions. The more data is available, the broader its knowledge will be, and the more accurate its solutions will be. This feature allows a distinction to be made between AI and robots. The latter repeat pre-programmed operations with the help of various sensors, but do not learn.
As a result, the question about protecting innovation as such is certainly a legitimate one. Technology inventors have indisputably earned appreciation and legal protection. However, a more important question arises here regarding how to regulate and protect the works created with the help of AI. Can they be considered works in the traditional meaning of copyright or patent law? Usually under copyright law, the author is an individual whose creative activities resulted in the creation of the work. Similarly, patent law recognises and protects inventors’ moral rights. Thus, traditionally we have protected works that initially arose in the human imagination.
Who should receive authorship of a literary, musical or audiovisual work created by AI? Should authorship be protected at all in this case? To whom should authorship be granted if the AI produces a technological invention – for example, by creating an ultra-thin and resilient material? Can it even be patent-protected? The laws which are currently in force do not provide clear and unambiguous answers to these questions. However, after an in-depth analysis, we would most likely arrive at a negative conclusion: these laws were only adopted to protect human creative activity. In age of AI, they are not fully suitable. The US Patent and Trademark Office confirmed this conclusion when it rejected a patent application for an invention created by AI (a fractal light signal using impulses to adjust human brainwaves).
The European Parliament, having become aware of the importance of these issues, adopted a resolution on 20 October 2020 on the intellectual property (IP) rights for the development of AI technologies. The resolution envisages the role of AI in developing society, recommended regulation models, and the relationship between AI and IP rights.
As regards works created by AI, the European Parliament has expressed the opinion that they should not be protected by authorship because these works (music, art, literature and the like) cannot qualify as “intellectual creations”. By contrast, the Parliament has a different opinion with regard to technologically innovative inventions (which are usually protected by patents). In their view these works should receive the protection of IP rights in order to advance investment in this form of innovation.
The resolution is just the beginning of broader discussions about the future regulation of AI and the protection it deserves. The Parliament has forwarded the resolution to the Council, the Commission, and the national parliaments and governments. It cannot yet be predicted how long and complicated the discussions will be in order to arrive at specific draft directives or regulations. Nevertheless, legislation initiatives should not be postponed; otherwise, the innovators of the European Union, including Latvia, might suffer in competition with Asian and US businesses. This legal uncertainty does not promote development and investment in new products.
The responsible officials of Latvia now have the task of carefully assessing whether AI-generated works deserve copyright protection. If they decide in the affirmative and include it in national law, it will allow persons who control or supervise AI technology during the creative process to access the option of claiming property rights to the works produced.
This regulation would definitely change the traditional understanding of the essence, role and scope of copyright. It could probably serve as grounds to alter the definitions of innovation and originality. In the meantime, it seems that if the public wanted to enjoy, for example, paintings, music or architecture created by AI, there would be no grounds to deny protection to these works.
IP news in Lithuania
Genuine use of PETRUS trademark in Lithuania unproven
A wine-producing company, Petrus, (owner of the “PETRUS” and “PETRUS POMEROL Grand Vin” trademarks registered in Class 33) has objected to a new application for the trademark “PETRUS” (intended to be registered in Class 32) submitted by G. Petrus.
In his defence during the opposition procedure, G. Petrus requested Petrus prove genuine use of the “PETRUS” and “PETRUS POMEROL Grand Vin” trademarks in Lithuania for an uninterrupted period of five years.
Petrus has submitted two main pieces of evidence: the sale of 24 bottles of wine and the pre-sale (reservation) of a certain amount of wine.
The State Patent Bureau of the Republic of Lithuania has stated that the sale of the 24 bottles of wine was not supported by any sale documents, and the pre-sale of the wine is considered to only be a future transaction and therefore cannot be used as proper evidence to prove genuine use.
The Patent Bureau concluded that “Petrus” had not proven sufficient and genuine use of its trademark in Lithuania, due to lack of evidence. The decision is significant: it further confirms the practice of the Patent Bureau regarding the non-use of trademarks, according to which, in order to prove the use of a trademark, it is necessary in all cases to provide detailed and objective evidence of trademark use.
“GIBSON LES PAUL” V. “TAMSTA”: a similarity between two guitars
An American manufacturer of guitars, Gibson Brands, Inc., requested to declare invalid the trademark “tamsta”, owned by the Lithuanian company Tamsta, which is mainly engaged in the sale of different musical instruments. Gibson Brands, Inc. is the owner of the abovementioned EU trademarks, registered in Class 15 (music instruments); the trademark owned by Tamsta is registered in the same class.
The State Patent Bureau of the Republic of Lithuania has concluded that, for several reasons, the trademarks are not similar enough.
The importance of the word “tamsta” indicated under the guitar was pointed out. “Tamsta” in Lithuanian is used as a polite form of address to someone, and, as a result, the overall impression created by the signs is different.
In general, the images of the guitars registered as trademarks in Class 15 have a low level of distinctiveness. Besides, in the Gibson Brands, Inc. trademark, the visual appearance of the guitars is extremely realistic and detailed, unlike the trademark owned by Tamsta, which purely represents the silhouette of the guitar.
The Patent Bureau stated that weak elements of the trademarks (in this case that both trademarks are indeed images of guitars) cannot lead to confusion between signs if the other elements of the sign are dissimilar.
IP news in Estonia
Association of Estonian Actors enforcing copyright reform while Estonian film industry struggles for funds
The Association of Estonian Actors has announced plans to start exclusively exercising the economic rights that its members have assigned it, following the example of the Danish Actors’ Association. Previously, Estonian actors would exercise their economic rights and enter into contracts with film producers individually. As yet, the association has only announced its plans for the film industry:
- The association foresees that once private investments in addition to at least a further 28% or 40% have been covered by the film’s revenue, the producers must pay the association a royalty of 8% or 12% respectively of the producer’s income and the other private investors’ income.
- In the case of international co-productions, the licence fee is paid only from the income of the local Estonian producer. However, should the foreign producer want to acquire the rights to make use of the film, an additional fee is agreed based on the actor’s salary. This additional fee is adjusted according to the nature and extent of the foreign producer’s rights to the film.
Estonian film industry struggles under austerity
This copyright reform comes at an unfortunate time, as the Estonian government has just announced plans to decrease funding for domestic films by 42%. This concerned both the Estonian Guild of Film Directors and the Estonian Film Institute, who stressed that such a steep decrease would mean there would only be enough to make one domestic feature film in 2022. Following the backlash from the film sector, the government decided to allocate an additional 2 million euros of funding, which in reality still amounts to a decrease of 1 million euros of funding in the 2022 budget.
The Estonian film industry has been consistently underfunded. According to the Estonian Guild of Film Directors, a single funding injection for the country’s 100th anniversary brought the film’s funding to almost normal levels and the results were immediately visible. Most recently, the Estonian film industry has experienced success with the Estonian co-production Compartment No. 6 taking the Grand Prix at the 2021 Cannes Film Festival and the international blockbuster Tenet being filmed in Tallinn, Estonia during the summer of 2019.
Tallinn Film Wonderland a site of national importance
The Estonian film industry has been patiently waiting for its own film campus, Tallinn Film Wonderland, to be built in Tallinn. The campus is to include the largest studio complex in the Baltic region and state-of-the-art facilities for both local and international film and television projects. The film campus project was recently added to the list of cultural sites of national importance for cultural heritage endowment in Estonia. However, it currently remains unclear how and when the project will be funded.
Supreme Court of Estonia: Shazam admissible evidence in civil proceedings
The Supreme Court of Estonia has confirmed that screenshots of Shazam, the app able to identify music, can be used as documentary evidence in civil proceedings. The use of Shazam screenshots as evidence was under dispute in an action filed by the Estonian Performers Association against JJ-Street Dance School for unlawful use of phonograms. The Estonian collective management organisation had visited dance lessons conducted by JJ-Street and identified unlawful use of phonograms with the help of Shazam.
The Supreme Court of Estonia confirmed that Shazam screenshots are admissible as documentary evidence. However, such evidence does not constitute first-hand information, but rather the interpretation of the music played by a particular music recognition programme. If the other party justifiably questions the reliability of Shazam, the party providing the screenshot must also be able to present to the court a recording of the sound which the music recognition programme was used to identify. Such a recording makes it possible to verify the correctness of Shazam’s interpretation using a competing programme or to confirm it with other evidence: e.g. an expert opinion. Additionally, in order to be able to conclude from a Shazam screenshot that a particular song was made available to the public at a certain time and place, the evidence must also show where and when the music recognition programme was used.
First motion mark published in Estonia
The Estonian Patent Office has published the first motion mark to be applied for in Estonia. The motion mark includes the Estonian words “TÕE SÕNA” which translates as “the word of truth” and was placed in Classes 9 and 41, protecting mostly educational computer applications and web publishing of multimedia material. The motion mark can be viewed on the Estonia Patent Office’s website, here.
A motion mark is a mark consisting of the movement or a change in the position of the elements of a mark. It belongs to the so-called new types of trademarks, which include, for example, the position mark, multimedia mark, and hologram mark, among others. These new types of marks have not yet seen much use among Estonian applicants, according to the Estonian Patent Office.
Sorainen advised the first ever NFT project in the Estonian art scene
Law firm Sorainen advised the Temnikova & Kasela art gallery, based in Tallinn, Estonia, on the launch of their NFT (non-fungible tokens) project.
Artists Tommy Cash, Ilja Karilamp, Nik Kosmas and Katja Novitskova have teamed up with gallerist Olga Temnikova and NFT collector Edgar Aronov to create a line of artworks that form an ecosystem with independent value. Each artist has created a number of artworks based on which genesis NFTs are minted. As a result of burning mutagen NFTs, the genesis NFTs containing the artworks will mutate into variations.
First NFT project in Estonia
NFTs – digital tokens tied to assets that can be bought, sold and traded – are a recent addition to the art scene. Collectors and speculators have spent more than USD 200 million on an array of NFT-based artwork, memes and GIFs in the past month alone, according to market tracker NonFungible.com, compared with USD 250 million in the whole of 2020. The project was the first of its kind in Estonia.
Valued experts in the field
Temnikova and Kasela Gallery is an Estonian art gallery run by gallerists Olga Temnikova and Indrek Kasela. The gallery has mediated in the sale of Estonian art to the collections of Kiasma and Deutsche Bank, and to private collections in Russia, Finland, Austria and England. In 2015, Kris Lemsalu’s installation “Whole Alone 2,” presented by Temnikova and Kasela, was chosen as one of the five best exhibitions at the Frieze New York fair.
Our services and client team
We assisted the client with determining and regulating the parties’ rights and obligations. Our client team included partner Kaupo Lepasepp, counsel Kärt Anna Maire Kelder and senior associate Olivia Kranich.
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