The summer season has come to an end and the Sorainen Intellectual Property (IP) team is once again ready to share the latest IP highlights relevant to the Baltic region with you. What does the first sound trade mark registered in Estonia sound like? What kind of legislative changes are anticipated in Estonia and Latvia? Could you mistake Monster for Monstropedija? You will find answers to these questions and many more below.
- Proposed changes to the patents act to streamline proceedings
- Sorainen ranked #1 in IP law field in Estonia
- 30 years of Copyright law in Estonia
- First sound trade mark registered in Estonia
- Amendments to the Trademark Law and Law on Industrial Property Institutions and Procedures under development
- The former owner and chairperson of AS Dzintars lost a trademark dispute
Proposed changes to the patents act to streamline proceedings
The Estonian government has proposed amendments to the Patents Act, which aim to facilitate electronic proceedings with the Patent Office. Most importantly, the following changes have been proposed:
- the requirement to present a power of attorney will be replaced with the presumption of the patent attorney’s right of representation;
- patent attorneys will have the right to delegate the right of representation to another patent attorney operating within the same company;
- requirements to submit documents and notifications in writing will be relaxed in order to facilitate electronic proceedings;
- applicants will now pay state fees only once the Patent Office has verified the presence of the required documents for a particular application. This will help avoid situations where an applicant has paid a fee for an application that cannot be assessed.
As well as the Patents Act, amendments will also be made to the Layout-Designs of Integrated Circuits Protection Act, the Geographical Indication Protection Act and the Utility Models Act. The Estonia Parliament is yet to decide on the draft law which was introduced to the parliament on 1 September 2022. The majority of the changes are expected to enter into force on 31 August 2023.
Sorainen ranked #1 in IP law field in Estonia
On 5 September 2022, the results of the recent Kantar Prospera client satisfaction survey were released. We are happy to announce that clients ranked Sorainen as the Number One law firm in the category of IP services in Estonia. Thus, Sorainen retained the title of the company with the best specialists in the field.
The Kantar Prospera Tier 1 Law Firm Review covers 300 Baltic-based organisations that spend at least EUR 15,000 annually on outside legal help. In total, 65% of the respondents are top executives and a third are company lawyers and heads of legal departments. Sorainen was taking part in this survey for the eighth time. An overview of the survey can be found here.
30 years of Copyright law in Estonia
In December, the Copyright Act of the Republic of Estonia celebrates its 30th anniversary, as the first Estonian Copyright Act entered into force on 12 December 1992. However, this does not mean that prior to 1992 there were no copyright discussions in Estonia. In fact, even before the adoption of the first Estonian Copyright Act, the Association of Estonian Authors was founded as a non-profit organisation.
On 25 August 2022, a copyright conference dedicated to the 30th anniversary of the adoption of the Copyright Act and the development of copyright law in Estonia was held under the leadership of the Ministry of Justice. The conference focused not only on the fundamentals and history of copyright, but also discussed such details as the free use and additional protection of exclusive rights.
First sound trade mark registered in Estonia
The first sound trade mark was registered in Estonia by OÜ MIIL, a provider of container transportation services. Their container production, rental, transport and also various advertising services are now protected under the sound trade mark. The sound protected by MIIL can be found here.
Amendments to the Trademark Law and Law on Industrial Property Institutions and Procedures under development
On 8 September 2022, amendments to the Law on Trademarks and the Law on Industrial Property Institutions and Procedures were submitted to the responsible commission in the Latvian Parliament for review. The amendments are designed to implement the requirements of Article 45 of Directive (EU) 2015/2436, which approximates the laws of the member states regarding trademarks.
Article 45 of the directive defines the procedure for revocation or declaration of invalidity of the trademark. Currently, national laws require that a claim for revocation or invalidation of a trademark must be filed in court. However, in accordance with the directive, the new amendments provide that it will be possible to file a claim for these procedures not only in a court of general jurisdiction but also in the Appellate Council in the Patent Office. Such changes are introduced mainly because administrative procedures are simpler and cheaper for the parties and take a shorter period than court proceedings.
The bill needs to be reviewed in three readings in the Latvian parliament and then proclaimed by the president. It is expected that both amendments will enter into force on 14 January 2023.
The former owner and chairperson of AS Dzintars lost a trademark dispute
On 10 June 2022, an appellate court ruled in favour of the insolvent company AS Dzintars (hereinafter “Dzintars”) in the Dzintars and Future Formula trademarks dispute. AS Dzintars was one of the largest cosmetics companies in Latvia.
The dispute started when, during the legal protection period, the owner and chairman of Dzintars assigned trademarks to his newly established company, SIA Dzintars Beauty. The insolvency administrator of Dzintars asked the court to invalidate this assignment because it was done without compensation and at that time Dzintars was undergoing a legal protection period. The first instance court upheld the administrator’s claim. However, the former owner appealed the judgement, stating that he is the author of the trademarks and the assignment was made according to the Copyrights Law by exercising his personal rights.
However, the former owner could not present any evidence that he is the author of the trademarks. Therefore the second instance court did not overrule the first instance court’s decision and restored the insolvent company’s rights to the Dzintars national and international trademarks and declared the assignments made by the former owner invalid. According to the court, the trademarks were highly significant assets of the insolvent company.
The trademarks were registered to H.A. Brieger, which acquired all the assets of the insolvent Dzintars in 2020 and is now operating under the brand “Dzintars”.
MONSTER vs MONSTROPEDIJA: assessing the likelihood of confusion between two monsters (or trademarks)
The Appeals Division of the Lithuanian State Patent Bureau has examined the opposition of Monster Energy Company (USA) to registering the trademark “MONSTROPEDIJA” belonging to the applicant Alma littera UAB (Lithuania) with regards to goods in Classes 30 and 32.
As regards the assessment of visual and aural similarity, the Appeals Division pointed out that the comparable marks have the same initial syllable: “MONST”. Although the overlapping element is at the beginning of the marks, in the view of the Appeals Division, this fact in itself cannot be overemphasised when assessing the similarity of the marks. The Appeals Division also noted that the structure of the comparable words is completely different, as they consist of a different number of syllables and letters, and that only five letters arranged in the same order are reproduced in the long contested mark. Moreover, the mark “MONSTER” of Monster Energy Company is written in a stylised font, which further contributes to the visual distinctiveness of the marks. The Appeals Division also stressed that the pronunciation of the words is quite different.
Meanwhile, as regards the semantic similarity, in the present case, it was established that the earlier marks of Monster Energy Company consists of the English word “monster”. The Appeals Division notes that the meaning of this word will be clear and comprehensible to a wide range of people, not only to those who understand English, since this word is an international word that has a counterpart in the Lithuanian “monstras”. The Appeals Division agreed with the applicant’s argument that, although the word elements of the comparable trade marks are characterised by a term having the same semantic meaning (“monster”), the contested mark, as a compound word, nevertheless has a completely different conceptual meaning, due to the use of the term “pedija”.
The Appeals Division, having considered all the circumstances, decided to reject the opposition and to register the trademark “MONSTROPEDIJA”. However, the Appeals Division’s decision is not final and may be appealed to the Vilnius Regional Court.
Check out the June 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.