Springtime saw fruitful amendments in intellectual property legislation in Estonia, Latvia and Lithuania, as well as some interesting cases. Can BOSS prevent BOSSA NOVA from registering a trademark? Can Amazon be held liable for infringement of the Louboutin trademark? Read about these points and more by clicking the link below. We hope you find this compilation insightful and would as always be happy to tell you more about intellectual property (IP) protection in our jurisdictions.
- Obligation to notify authors and performers took effect on 7 June 2022
- Estonian Supreme Court: rights to a well-known trademark can belong to multiple persons
- Board of Appeal of the Patent Office rules in favour of HUGO BOSS opposition to Bossa Nova trademark extension to Latvia
- Court of Justice of the European Union dismisses Poland’s claim that Article 17 of the DMS directive violates freedom of expression and information in Case C-401/19
- Baltic countries establish intellectual property protection network
- Amendments to Latvian Electronic Mass Media Law
- Online intermediaries cannot be held directly liable for infringements of the rights of trade mark owners taking place on their platforms as a result of commercial offerings by third parties
- Lithuania has, as of 1 May 2022, implemented the EU Copyright Directive (2019/790) and EU Retransmission Directive (2019/789)
Obligation to notify authors and performers took effect on 7 June 2022
On 7 June 2022, the obligation to notify authors and performers about the use of their works and performances took full effect and we would like to remind you the substance of the notification obligation.
Pursuant to the amended Estonian Copyright Act, a person (or their successor) using a work or a performance under an author’s contract must give to the author or the performer (or their representative) at least once a year, in a format which can be reproduced in writing (e.g. via e-mail), timely, relevant and sufficient information regarding the use of the author’s work or the performer’s performance, in particular the manner of use, the total revenue received and the remuneration due to the author or the performer
The purpose of the amendment is to strengthen the negotiating position of authors and performers in the music, theatre and film industry. Despite the noble intentions, the regulation unfortunately establishes a burdensome and bureaucratic obligation for businesses in every sector, especially for small and middle-size enterprises. Only the future will show whether the aim justifies the means in this case.
Estonian Supreme Court: rights to a well-known trademark can belong to multiple persons
On 16 March 2022, the Supreme Court of Estonia made a far-reaching decision with regard to well-known trademarks. The dispute concerned the trademark “Vanemõde” and took place between the members of a former ensemble with this name. The defendants tried to register “Vanemõde” as a figurative trademark, while the plaintiff opposed this by arguing that he was the founder of the ensemble and gave it its name.
According to the Estonian Supreme Court, rights to a well-known trademark can belong to multiple persons. The court explained that a well-known trademark is intended to distinguish goods and services, and consumers associate goods and services with a particular business by its trademark. In light of the foregoing, the proprietor of a well-known trademark is a person who uses that mark in the course of trade and who is associated with that mark. As a result, a well-known trade mark may be owned by several persons at the same time if they all contribute to it. When a person is a proprietor of a well-known trademark, the consent of that person is required for the registration of the trademark.
Board of Appeal of the Patent Office rules in favour of HUGO BOSS opposition to Bossa Nova trademark extension to Latvia
The owner of the HUGO BOSS and BOSS trademarks opposed the extension of the figurative trademark Bossa Nova to Latvia, and the Patent Office ruled in favour of the opposition.
The Patent Office concluded that the trademarks were registered for identical or similar goods (different types of clothing). Even though the HUGO BOSS and BOSS trademarks were registered as verbal and the Bossa Nova as figurative, the office further explained that the figurative elements in Bosa Nova trademark differed only in terms of the style and colour of the text, therefore, they did not provide any distinctive elements that could distract consumers’ attention from Bossa Nova’s verbal part, which fully included the designation “BOSS”.
The Patent Office also highlighted that “nova”, used in the second part of the trademark being opposed could mislead Latvian consumers into thinking that what is meant is a novelty, a new version of “BOSS”. Such phonetic, visual and semantic similarities could lead consumers to think that the two trademarks are related, according to the Patent Office; the owner of the trademark being opposed could use these similarities of the well-known trademarks BOSS and HUGO BOSS, which have a good reputation, to acquire an unfair advantage in the market.
Therefore, the Patent Office recognised the “Bossa Nova” trademark as invalid in Latvia from the day when its international registration was extended to Latvia.
Court of Justice of the European Union dismisses Poland’s claim that Article 17 of the DMS directive violates freedom of expression and information in Case C-401/19
Article 17 of the Digital Single Market Directive 2019/790 (DSM directive) places direct liability on online content-sharing service providers (for example, YouTube and Spotify) with respect to copyright infringements in online content-sharing service user uploads. The providers concerned may be exempted from that liability if they monitor the content uploaded by users to pre-empt infringements. Poland brought an action before the CJEU requesting it to annul Article 17 of the DMS directive because adoption of automated filtering mechanisms infringes the right to freedom of expression and information guaranteed in the Charter of Fundamental Rights of the European Union.
In 2021, Advocate General (AG) Henrik Saugmandsgaard Øe delivered an opinion in this case in which he stated that Article 17 of the DMS directive is compatible with the freedom of expression and information. AG Henrik Saugmandsgaard Øe concluded that the limitations to freedom of expression and information in Article 17 are justified to guarantee the protection of creators’ rights. AG Henrik Saugmandsgaard Øe further concluded that the safeguards provided for in Article 17 of the DMS directive minimise the risk of “over-blocking” lawful information.
In its judgment, the CJEU used similar argumentation. The court emphasised the importance of freedom of expression and that indeed automated tools will be necessary to adopt Article 17 of DMS directive, which could entail risk to freedom of expression. However, it is not an absolute right and such limitation is justified to protect intellectual property rights. Court agreed with AG that according to Article 17 of DMS directive, lawful content cannot be blocked and, furthermore, Article 17 also provides safeguards when providers unjustifiably block lawful content.
Baltic countries establish intellectual property protection network
On 25 March 2022, Baltic Technology Transfer Offices (TTO) concluded a cooperation agreement with the aim of promoting knowledge and technology transfer between research and academic institutions, entrepreneurs and public persons, to spread information and knowledge between partners and society and also to establish contacts between partners and other networks. The agreement provides for cooperation between 16 scientific organisations and three intellectual property protection organisations.
Amendments to Latvian Electronic Mass Media Law
There have been two recent sets of amendments made to the Latvian Electronic Mass Media Law.
The first set of amendments to the Latvian Electronic Mass Media Law, which came into force on 21 April 2022, establish more effective control of the on-demand electronic mass media services provided in Latvia by giving the National Electronic Mass Media Council of Latvia (NEPLP) the right to restrict access to on-demand services: i.e., the NEPLP may request the blocking of websites that provide on-demand electronic mass media services in the following situations:
- 1) the NEPLP has not been notified of the on-demand electronic mass media services and the service provider has not ceased their provision upon the NEPLP’s request
- 2) it is not possible to identify the service provider
- 3) blocked on-demand electronic mass media service providers use alternative domain names for identical already blocked on-demand electronic mass media services
The second set of amendments to the Latvian Electronic Mass Media Law, which came into force on 31 May 2022, aim to ensure that audio, audio-visual programmes and audio-visual services are not offered on-demand in Latvia by a country which is threatening another country’s territorial integrity, sovereignty or independence. The amendments provide that the NEPLP has the right to restrict the distribution of such programmes or services in Latvia.
Online intermediaries cannot be held directly liable for infringements of the rights of trade mark owners taking place on their platforms as a result of commercial offerings by third parties
According to the Advocate General’s Opinion in cases C-148/21 and C-184/21 of the Court of Justice of the European Union, examining whether Amazon is responsible for the use of the Louboutin trademark (a red outer sole, by which Louboutin are known) by third-party sellers, liability on the part of the operator arises if the sign is used in its own commercial communications. This condition is met if the addressee of such a communication makes a specific link between the operator and the sign in question. The perception of a reasonably well-informed and reasonably observant user of an online sales platform should be considered when determining whether a sign is used in the commercial communication of the operator of that platform.
While noting that the commercial offerings of third parties and of Amazon are presented uniformly and that each includes the Amazon logo, the Advocate General points out that it is always specified, in Amazon’s advertisements, whether the goods are sold by third-party sellers or directly by Amazon. Accordingly, the mere fact that Amazon’s advertisements and those from third-party sellers appear next to each other does not entail that a reasonably well-informed and reasonably observant internet user might perceive the signs displayed in the advertisements of third-party sellers as an integral part of Amazon’s commercial communications.
Lithuania has, as of 1 May 2022, implemented the EU Copyright Directive (2019/790) and EU Retransmission Directive (2019/789)
Amendments to the Law on Copyright and Related Rights of the Republic of Lithuania entered into effect on 1 May 2022. These amendments implement two important directives: the Retransmission Directive, and, especially, the new Copyright Directive. The latter has resulted in international controversy and numerous discussions, including in Lithuania during the implementation stage. As a result of this, the directives were transposed into Lithuanian law nearly a year late.
These changes to the law will have a significant impact on the use of objects of copyright and/or related rights, especially online. Some of the most significant changes include extended collective licencing provisions, new authors’ rights (such as the right to receive appropriate and proportionate remuneration), and recognition of text and data mining. But perhaps the most significant new features are the rights granted to electronic press publishers (who will now be entitled to remuneration for online use of electronic press publications) and changes to the liability regime applicable to online content-sharing service providers (they will have to receive authorisation from rightsholders for use of their content uploaded by users of content-sharing platforms, or make their best efforts to do so).
Check out the February edition of intellectual property highlights.
Our international intellectual property team is at your disposal, should you need advice on any legal issues you are facing.