As business year 2022 is now in full swing and the global economy is continuing its recovery from what seems to have been the worst period of the pandemic, Sorainen’s intellectual property (IP) team has compiled for you the most interesting news from the Baltic States and Belarus, including the ultimate failure of the Chanel bottle to be registered as a trademark in Lithuania; the story of a battle over a name between two banks; important and already effective (Estonia), and anticipated (Latvia), changes to copyright legislation; the launch of a revolutionary web portal offering access to various evidence-based medicine databases (Estonia); and criminal liability for selling forfeited Puma products in Belarus. We hope you find this compilation insightful and would as always be happy to tell you more about IP protection in our jurisdictions.
- PUMA trademark infringer brought to criminal liability
- Patent office launched depositing copyrigh
- IP strategy until 2030 approved
- Changes to the Copyright Act
- The Supreme Court decision on community designs
- Sorainen advised Synbase on revolutionising evidence-based medicine databases
- Chanel perfume bottle has no distinctive element, according to the Supreme Court
- Likelihood of confusion between EM BANK and mBank trademarks does not exist
PUMA trademark infringer brought to criminal liability
Minsk Central District prosecutor’s office supported state prosecution in a criminal case against an individual who was charged with illegal use of industrial property rights, committed within a year of receiving an administrative penalty for the same violation.
In May 2021, the accused sold and stored for sale clothes labelled with the “PUMA” trademark owned by the company PUMA SE (Germany). The accused did not have the rightsholder’s consent or documents confirming purchasing clothes from the representatives of PUMA SE in Belarus.
Taking into account the evidence presented, Minsk Central District court issued a guilty verdict. The accused was sentenced to a fine of 310 basic units (approx EUR 3,400). In addition, the court confiscated the funds received for the sale of counterfeit clothing, as well as the counterfeit stock.
Patent office launched depositing copyrigh
On 1 January 2022 the patent office launched a new service for the voluntary registration and deposit of copyright, as well as related documents and materials.
The patent office:
- accepts for storage a digital copy of the work, as well as the necessary documents and materials about the work, along with a calculation of the checksum (hash sum) of the archive file in order to keep the provided information unchanged
- enters information about the work into the Register of Software, the Register of Databases or the Register of Copyright
- places information about the copyright, including the claimed author (co-authors) and other copyright holders, on its website (on the applicant’s request)
- issues a certificate of voluntary registration and deposit of the copyright
It is expected that this service will provide the copyright holder with an additional tool to protect their rights. If necessary, the patent office will be able to confirm the copyright existence as of the date of registration and deposit, and also confirm the persons indicated as its holders.
IP strategy until 2030 approved
The Council of Ministers by Resolution No. 672 approved the Strategy of the Republic of Belarus in the field of IP for the period until 2030 (Strategy). The Strategy defines the main directions for improving the national IP system, and the goals and objectives of state policy in this area.
The Strategy has the aim of improving the efficiency of the IP management system and transforming the country’s research and creative potential into one of the key resources for economic growth.
To implement the Strategy, an action plan has been prepared for the first three years (2021–2023) in the relevant areas, indicating the responsible persons and deadlines. The planned actions include, for example:
- considering and, if deemed necessary, drafting the concept of the IP Code;
- improving regulation of collecting remuneration for reproduction of certain copyright objects for personal purposes, as well as for the using phonograms published for commercial purposes.
Changes to the Copyright Act
On 7 January 2022, amendments to the Estonian Copyright Act stemming from the implementation of EU Directives 2019/790 (DSM) and 2019/789 (SatCab) entered into force. The most notable amendment establishes a general obligation of notification – any person using a work or a performance under an author’s contract is obliged to give timely, relevant and sufficient information to the author or the performer at least once a year in a format which can be reproduced in writing regarding the use of the work or the performance, in particular the manner of use, the revenue received thereof and the remuneration due to the author or the performer.
The obligation is active: i.e. the author or the performer must be provided with the information regardless of whether he/she has requested it or is interested in receiving it. Terms and conditions of a contract which derogate from the notification obligation to the detriment of the author or the performer are void. Although the amendment’s purpose was to strengthen the negotiating position of authors and performers in the music, theatre and film industry, it actually establishes a burdensome and bureaucratic obligation for businesses in every sector. Since the law does not exclude employment contracts from the regulation, businesses might need to start notifying their employees as well. The notification obligation will apply from 7 June 2022.
The Supreme Court decision on community designs
On 10 November 2021, the Supreme Court made a new decision related to community designs, particularly about Article 110(1) of Regulation (EC) No 6/2002. The plaintiff found that selling replica rims in a set eliminates the applicability of the “repair” clause arising from Article 110(1). However, the court found that the fact that rims are being individually does not automatically mean that they are being sold for the purpose of upgrading cars. In some cases, in order to repair a defective car, it may be justified to replace all the rims, not only the damaged one. The purpose of the sale is relevant: it can only be to repair damages cars.
Another question was whether an offset of 4–5 mm compared to the original rims precluded the application of the “repair” clause. The Court of Justice has previously found that a difference in measures is important when applying the clause because such a difference usually causes the copies and original parts to not be visually identical. However, in this case, it was proven that such a small difference was not visually noticeable and therefore it was still possible to apply the “repair” clause.
Sorainen advised Synbase on revolutionising evidence-based medicine databases
Law firm Sorainen assisted Synbase, an Estonian service provider for healthcare professionals, in tackling various data protection and intellectual property matters in relation to launching its revolutionary web portal, which offers access to various evidence-based medicine databases.
Supporting healthcare professionals
Synbase saves healthcare professionals time by combining the latest knowledge in evidence-based medicine into a convenient, comprehensive service, offered now via both an integrated software solution and a web portal. The service combines 16 evidence-based databases required for clinical work. The constantly updated databases can be used as a support system for clinical decisions by integrating the service into the information system of a family doctor, hospital or pharmacy.
We advised Synbase on a pro bono basis, as part of our Shared Mission programme for the year 2021, which provided EUR 100,000 worth of free legal advice to companies and initiatives that aim to do good in an innovative way in their local communities and globally.
Our client team
New amendments to the Copyright Law under development
New amendments to the Copyright Law are currently under way in Latvia, implementing Directive (EU) 2019/789 and Directive (EU) 2019/790. The amendments will supplement the legislative framework with new provisions in relation to remuneration and content availability in online platforms. The amendments are currently being developed by a special working group led by the Ministry of Culture.
While the current regulation of the Copyright Law already envisages the right for an author to request information in relation to the use of their work, the amendments are expected to specify and strengthen the author’s right to information and equitable remuneration. Thus, the users of copyright objects will soon have to fulfil a new obligation: to provide the author with regular information on the usage of their work no less than once a year. This includes:
- the information on the occasions when the work has been used;
- number of sub-licensees;
- the amount of income the work has brought in;
- the remuneration that the author will receive.
The Copyright Law currently does not provide the right to change the remuneration amount if there are any grounds to suggest that it is not adequate. There is also no law-established procedure for the author to request any additional remuneration. The amendments are aimed at establishing such rights and allowing the authors to come up with their initiatives when they deem it necessary.
The Copyright Law also does not envisage the right to revoke an exclusive licence or contract due to the fact that the work is unused. It is expected that the new amendments will provide the authors with this right regardless of whether such provision was part of the initial licence or contract.
For the purposes of specifying the issues related to use of copyright objects on online platforms, the law will introduce a new section. This includes the introduction of new definitions of online content-sharing service providers and a more detailed procedure for determining liability for unauthorised use of copyright objects. For example, when determining liability, the authorities will consider:
- the service provider’s efforts to initially obtain the authorisation;
- the reaction time and efforts to remove the content once it was discovered that it had been published without proper consent from the author.
Online content-sharing service providers will not only be ordered to process and resolve author complaints, but also obliged to invest effort into avoiding repeated infringements.
At the moment, there is no official information on when the draft amendments are planned to be sent for adoption by the legislator. However, we currently expect the amendments to come into force not earlier than mid-2022.
Chanel perfume bottle has no distinctive element, according to the Supreme Court
As presented in our previous intellectual property highlights of 14 April 2021, the courts of lower instances in Lithuania came to the conclusion that the Chanel perfume bottle has no distinctive element and therefore cannot be registered as a trademark in the country under the Madrid Protocol.
On 12 January 2022, the Supreme Court of Lithuania upheld the decision of the lower instance courts for the following reasons:
- A three-dimensional mark consisting of the representation of a product’s packaging may only be treated as having a distinctive element if it enables the average consumer who is reasonably well-informed and observant to distinguish, without any special analysis, that a specific product is produced by the specific company.
- The shape of Chanel bottle is not, in principle, significantly different from the norms or customs of the perfume sector and does not have sufficient characteristics to enable the average consumer to associate the packaging with the commercial origin of the product.
The judgement of the Supreme Court is final and cannot be appealed.
Likelihood of confusion between EM BANK and mBank trademarks does not exist
On 17 December 2021, the Court of Appeal of Lithuania decided that a likelihood of confusion between the EM BANK and mBank trademarks does not exist. The Court of Appeal supported its position by the following arguments:
- Visual comparison: the graphical representation of the trademarks is not similar due to their different colours and fonts. On top of that, the mBank trademark is considered extremely bright, cheerful, and even playful, in contrast with the EM BANK trademark, which is more subtle and classic in its design.
- Phonetic comparison: a certain phonetic similarity in the verbal elements can be established, although all the elements indicated in the trademark shall be evaluated when deciding on the phonetic comparison – including “the European Merchant Bank” – and if this is done, the phonetic similarity of the trademarks becomes minimal.
- Conceptual comparison: the word “bank”, used in both trademarks, is not a distinctive element for banking services.
- A higher degree of attention: consumers have a relatively high level of attention when choosing financial services, which further reduces the risk of confusion.
Our international intellectual property team is at your disposal, should you need advice on any legal issues you are facing.