Dear clients and cooperation partners,
In this mid-year edition of IP Highlights, we provide an overview of recent significant events in the area of intellectual property in all three Baltic States and Belarus, from the latest news on changes in IP laws to high-profile cases. We also take the opportunity to thank our clients and cooperation partners for entrusting us with projects and providing feedback, which secured our top positions in the Legal500 IP rankings.
We hope you enjoy the read, and wish you a great upcoming summer holiday season!
Sincerely yours, Sorainen Intellectual Property Team
Changed legal protection of topologies of integrated microcircuits
In December 2018 a new version of the Law on Legal Protection of Topologies of Integrated Microcircuits was passed in Belarus. The law will come into force on 28 June 2019. The most significant changes include reduction to 3 months of the term for publication of data about topology registration; new grounds for annulling topology registration, i.e. non-conformity of registered topology with the originality condition, illegal indication of author(s) and (or) rightholder(s) in the topology certificate; improvement of the registration mechanism for employee topology with payment of remuneration to the author.
Battle for sock labelling in the Supreme Court
The Belarusian Supreme Court has delivered another judgement on trademark infringement.
Mark Formelle, a major Belarusian clothes manufacturer and holder of the combined trademark “MF”, under which it sells socks, brought a claim against a local company for trademark infringement.
The respondent produced and sold men’s socks with labels containing the letters “FM” and the phrase “For Men”. The claimant asserted that the label is confusingly similar to its own trademark and asked the Supreme Court to ban the respondent from using the designation “FM” in marking socks. The respondent argued that the dominant elements in its label, which are the letters “FM” and the phrase “For Men”, and in the claimant’s trademark, which is a purple square and the letters “MF”, were different and overall the designations were not associated with each other. Consequently, they were not confusingly similar.
The Supreme Court decided in favour of the claimant, stating in its reasoning that the dominant elements of the claimant’s trademark and the respondent’s label were the letters “MF” and “FM” respectively. Use of the letters “F” and “M” of similar substandard font, size and colour gives the impression that “MF” and “FM” are similar visually; and their similarity in terms of sound is based on the same consonants. The criteria of semantic similarity could not be considered as far as the dominant elements of the trademark and the label are two Latin letters without semantic meaning. So, the trademark “MF” and designation of the label containing the letters “FM” are associated with each other on the whole and, therefore, are confusingly similar.
Our client Nascar is successful in protecting its trademark
On 21 March 2019 the Estonian Industrial Property Board of Appeal made a decision to satisfy the claim of the NATIONAL ASSOCIATION FOR STOCK CAR AUTO RACING, Inc. (NASCAR) to repeal the Estonian Patent Office’s decision to register the trademark NASCAR in Nice classification class 5 for the benefit of Amaxa Pharma LTD. The Board of Appeal found that sufficient evidence was filed to conclude the broad global fame, good reputation and high distinctive character of NASCAR’s own earlier trademark NASCAR due to its long-term global use. The decision by the Estonian Industrial Property Board of Appeal is still open to appeal, but if not overturned, enables NASCAR to support its claim that the trademark NASCAR is well-known worldwide in any future potential disputes.
A similar ruling was delivered by the Latvian Industrial Property Board of Appeal on 8 April 2019. The Board also recognised NASCAR as a well-known trademark and a mark with a reputation in the European Union. The decision states that given the popularity of the trademark abroad and the fact that the NASCAR competition can be followed via broadcast and social media, it is inevitable that Latvian consumers’ awareness of the trademark is established. This decision is also open to appeal.
Practice of applying for court injunctions
On 18 December 2018 the Latvian Court of Cassation decided not to overrule a judgment of the Court of Appeal concerning illicit use of a trademark and unfair competition.
Of procedural importance is the Court’s analysis regarding applications for injunctions.
The Court indicated that this application for an injunction would be justified if:
- The infringement was continued;
- The infringement had been terminated but there was a risk of its recurrence; or
- The infringement had not yet occurred, but the exclusive rights of the proprietor of the trademark were likely to be infringed in the future.
This means that the aim of an injunction is to prevent future damage, unlike compensation for damage, which is primarily intended to compensate damage that has already occurred.
In this case the defendant was informed about infringement of the applicant’s exclusive rights, and without delay he had promised to suspend the infringement and had indeed done so, and the infringement had already been rectified before submission of the application. According to the Court, this meant that no injunction was necessary – no risks existed to be prevented. Therefore the decision of the lower instance court was recognized as correct.
Decision on trademark infringement in favour of Topo grupė
The Lithuanian Court of Appeal upheld Topo grupė’s claim.
Two years ago our client Topo grupė, a leading Lithuanian retailer in electronics and home appliances, and its opponent registered two similar trademarks with the Lithuanian State Patent Bureau. The opponent filed a trademark registration application earlier, although Topo grupė had already been using the trademark prior to the application. Both trademarks had the same dominant element Tech Top and were used in overlapping classes under Nice Classification including wholesale of electronic goods.
Topo grupė brought a claim against the infringer asserting that the opponent’s trademark registration was made in bad faith. This ground for invalidity of trademark registration is rarely met in the case law of the Lithuanian courts because it is extremely hard to prove. However, Topo grupė provided abundant evidence that its trademark had already been broadly used (including photographs from shopping malls, video commercials, newsletters etc.), proving that the opponent could not have been unaware of the similar trademark and thus acted in bad faith.
The Court of First Instance decided in favour of Topo grupė, a decision upheld by the Court of Appeal. Both courts acknowledged that Topo grupė was the first to start using the Tech Top element and actively invested in introducing the trademark to the market. The courts took into account that even though the opponent knew about the activity of Topo grupė, after half a year it filed an application to register a similar trademark and later protested against its competitor’s actions in registering their trademark. The courts noted this circumstance as proving the bad faith of the opponent and ruled that its trademark registration was invalid.
Sorainen occupies leading positions in the Legal500 rankings
The Sorainen intellectual property team occupied leading positions in the Legal500 international rankings. Five lawyers were also listed in the individual rankings.
The Legal500 described Sorainen as a law firm which “has ‘unparalleled experience in the region’ and attracts local and international clients, particularly from the pharmaceuticals and life sciences sectors, with its full range of IP and technology services”. The Legal500 also noted that “at Sorainen, the ‘advice is practical’, the team ‘delivers a good service’ on ‘intellectual property enforcement’ and handles a broad range of instructions, ranging from securing ownership of IP to IP-related disputes”.