Our team share another piece of intellectual property (IP) news in the Belarus-Baltics region telling about curious cases, news in legislation, and some measures taken by governments due to the COVID-19 pandemic which may still be helpful to business (mainly extension of statutory deadlines and, in some cases, waiver of statutory duties).
IP news from Belarus
WIPO PROOF launched to help prove existence of any file at a specific point of time
The World Intellectual Property Organisation (WIPO) launched the new WIPO PROOF online-service on 27 May 2020. The purpose of this service is to provide a date- and time-stamped digital fingerprint of any file, proving its existence at a specific point in time.
Because of the increasing digitalisation of the modern world, different digital files containing valuable information may become the result of inventive and creative activity. Such data may be subject to different kinds of infringement. WIPO PROOF is intended to assist with so-called “certification of information authorship” by issuing tokens (“confirmation certificates”).
WIPO PROOF applies to digital files containing different types of information: for example, copyright (art, music, lyrics, software, and textile designs), trade secrets and know-how (software algorithms, formulas, recipes, manufacturing processes, business plans), and other digital assets.
As to copyright, it is important to mention that this occurs from the moment of creating a work. Still WIPO PROOF tokens serve as proper evidence during court proceedings to establish the object, date and time of copyright occurrence.
You can find more information about WIPO PROOF service here.
Amendments to the Law on Copyright introducing open licence, limiting number of reproductions of a work
On 27 May 2020 the Law of the Republic of Belarus “On Copyright and Neighbouring Rights” was amended. The amendments include the following:
- The notion of “open licence” has been introduced – this is defined as a non-exclusive licence agreement expressed in the form of an adhesion agreement. All conditions of such an agreement should be 1) accessible to everybody and 2) placed in such a way that the licensee is able to familiarise itself with them before starting to use intellectual property;
- If a licence agreement with an author (individual) provides for a fixed payment, the number of reproductions of a work should be limited by a maximum indicator;
- Licence agreements with authors (individuals) by default cover the territory of the Republic of Belarus and are valid for a term of three years, which may be changed by the parties to the agreement. Before this novelty an agreement lacking this provision might have been recognised as non-concluded.
Unfair competition and trademarks: battle for “Marseille” and controversy over a popular carbonated drink brand
In May, two interesting cases covered unfair competition; questions related to legal protection of trademarks were raised.
1) The first case concerns the combined trademark (Trademark).
The case goes as follows:
- A Belarusian company (Company A) opened a cafe. The word “Marsel” (“Марсель” in Russian) similar to the Trademark was used on the signage in burgundy and brown colours.
- Later other Belarusian companies, which were considered as a group of legal entities (Company B and Company C), opened a cafe and beauty salon. The relevant signages contained the Trademark.
- Company B registered the Trademark in its own name.
- Company B sent a cease and desist letter to Company A to conclude a licence agreement or to stop using the Trademark.
- Company A filed an application with the antimonopoly authority regarding unfair competition by Company B and Company C .
As a result, the antimonopoly authority (a) found the actions by Company B and Company C related to Trademark registration, opening a café & sending out a cease and desist letter as using an exclusive Trademark right in order to gain an advantage in entrepreneurial activity and (b) declared these actions to be unfair competition.
Later the dispute was settled amicably between the parties. Company A declined to bring Company B and Company C to administrative liability.
2) The second case concerns the word trademark “Snezhok” (“Снежок” in Russian).
The competent authority declared selling the carbonated drink “MAQUA Snezhok” by Company D to be unfair competition. The label “MAQUA Snezhok” contained the word “Snezhok”, which was qualified as confusingly similar with the trademark “Snezhok” registered in the name of Company E. Company E also used its trademark on drink labels. See the pictures of the two opposing drinks below.
Company E (with registered trademark) on the left , Company D (unfair competitor) on the right
Similarly to the first case, the dispute was settled amicably between the parties. Company E abandoned its claim to hold Company D to administrative liability.
Belarus: IP-related COVID-19 measures
The IP-related COVID measure in Belarus concerns renewal of patents and trademarks. If the validity of a patent for an invention, utility model, industrial design, plant variety or trademark registration expires from 30 April 2020 to 31 July 2020, the period is automatically extended for another three months. After expiration of these three months it is still necessary to apply for renewal and pay the state fee.
IP news from Estonia
What does Brexit mean for EU trademarks and ongoing proceedings?
After 31 December 2020, all registered EU trademarks will be automatically transformed into UK comparable trademarks. However, all pending EU trademarks that have not been registered by 31 December 2020 must be re-filed in the UK. The comparable UK trademark will retain the original priority date if the application is filed within 9 months from 1 January 2021.
As from the withdrawal day, UK rights will cease to be earlier rights and any opposition or invalidity request that is based solely on a UK right is expected to be automatically dismissed in EUIPO proceedings.
If an EU trademark is declared invalid or revoked or is cancelled in the EU as the result of a proceeding which was ongoing on 31 December 2020, then the corresponding right in the UK is also to be declared invalid or revoked or cancelled.
Where an opposition or cancellation action is filed against an EU trademark after 31 December 2020, it is expected not to affect the UK comparable right arising from the EU trademark. This means that separate proceedings must be filed in the UK against the UK comparable trademark.
Estonian Tax and Customs Board helps companies to take action against counterfeit goods
Daimler AG has successfully defended its community design rights for its alloy wheel rims against infringement in Estonian courts. The defendant, a spare parts seller who imported and sold copies of the wheels in Estonia, relied on the repair clause of the Regulation on Community Designs and claimed the wheels constitute a component part of a complex product used for the purpose of repair of the car so as to restore its original appearance. The court ruled in favour of Daimler referring to ECJ Acacia joined cases C-397/16 and C-435/16. The court explained that the sale of a set of four wheels is upgrading, not repairing, a vehicle, and that the defendant had not fulfilled the duty of diligence as regards compliance by downstream users with the conditions laid down in the repair clause.
The case outlines how companies can protect its IP rights by turning to the Estonian Tax and Customs Board and successfully preventing counterfeit copies being imported and marketed in Estonia. Our team of experts can help companies apply to the customs administration to take action on products counterfeiting their IP rights.
Estonian companies are taking advantage of “audio logo”
For years now, it has been possible to register short audio and video clips as trademarks in addition to the traditional word and figurative marks in the EU. But Estonian companies have just recently started finding the “voice” or “tone” of their brand with Olerex announcing a competition for its new audio logo.
Registration of new types of mark has been made easier by the elimination of the graphic representation requirement in the EU Trademark Regulation. For example, sound and multimedia signs, i.e video clips, can now be easily registered as trademarks. There are still several requirements which the representation of a trademark must meet. The representation must be in a form that uses generally available technology that can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner. Most importantly, this means companies can now protect their trademarks in the way they are actually represented in today’s marketing channels on television, radio and the web.
Estonian court orders the state to pay 3.5 million euros compensation to collective management organisations due to inadequate private copying levy mechanism
The Estonian Circuit Court has awarded nine collective management organisations appro[A1] x 3.5 million euros as compensation for inadequate private copying levy legislation in Estonia. The decision of the Circuit Court has not yet entered into force and the parties have the opportunity to file an appeal in cassation against the decision with the Supreme Court by 30 July 2020 at the latest.
According to the Information Society Directive, a member state is obliged to adopt an adequate legal mechanism that would guarantee right holders equitable remuneration in return for introducing the private copying exemption to its legislation. The private copying levy is paid by consumers when purchasing recording or storage media or services. The list of levied products was last updated in 2006 in Estonia and an update has been heavily debated. The Estonian Supreme Court had previously acknowledged the need to amend the law in 2016, but the requirements are still not met. The Ministry of Justice has indicated that a proposal for amending the private copying levy regulation is to be introduced in the autumn of 2020.
Estonia: IP-related COVID-19 measures
The Estonian Patent Office supports a case-by-case approach and has highlighting various procedural measures already available under applicable law for IP matters during the covid-19 emergency situation in Estonia.
The Patent Office indicated readiness to extend and restore procedural deadlines, as well as suspend and restore proceedings in matters relating to trademarks, industrial designs, patents and utility models.
|Extending procedural terms||Suspending and restoring proceedings||Restoration of procedural terms|
In most cases, an application from the applicant or the applicant’s representative is required. It should be taken into account that the emergency situation in Estonia ended at midnight of May 18 and applying these measures should be further substantiated by the applicant.
IP news from Latvia
Latvia: IP-related COVID-19 measures
The new amendments to Regulations No. 723 of the Cabinet of Ministers On the Price List of Paid Services of the Patent Office enable owners of industrial property rights at no cost to extend deadlines, renew rights or continue proceedings in the case of non-observance of time limits.
The Latvian Patent Office can withdraw a fee for these services if an owner of industrial property rights could not observe time limits due to the COVID-19 restrictions. Advantages for COVID-19 affected persons apply during the state of emergency and four months after its end, i.e., to 10 October 2020. The new amendments entered into force on 8 May 2020.
The amendments were initiated due to information received from the owners of industrial property rights who do not reside in Latvia and cannot meet the set deadlines. The amendments are crucially beneficial, since the majority of the owners of industrial property rights are persons or companies abroad without a declared or legal address in Latvia.
New database on patents and supplementary protection certificates free to use for everyone
The Latvian Patent Office has created a new database on patents and supplementary protection certificates by digitalizing and migrating data from several existing sources and compiling them into one source that is accessible, convenient and free of charge. The database contains information about over 6000 Latvian patents and 38 000 European patents plus almost 500 supplementary protection certificates.
Previously, full information about European patents which were valid in Latvia could be obtained by requesting the Patent Office to issue a notice. So the new database could be useful in order to check existing and expired patents, find licensors, prevent violation of patent owner rights, avoid development of existing methods and get inspiration for new innovations.
Search for Latvian or European patents in the Latvian patent register is available here.
Search for supplementary protection certificate in the Latvian patent register is available here.
Industrial Property Board of Appeal rejects registration of trademark “MORE THAN LAW”
On 6 March 2020 the Industrial Property Board of Appeal left in force the Patent Office’s decision by which it rejected registration of the trademark “MORE THAN LAW”, which was filed by a Latvian law firm (Applicant).
The mark was applied for registration for Nice Class 45 – legal services. It was a word mark, and it did not consist of any additional graphic elements. Registration was rejected on the basis of not having any distinctive character with respect to the services applied for.
According to The Board of Appeal, in different contexts the word “law” can have several meanings– “written legal act, jurisprudence, legal profession etc.” Therefore, it disagreed with the Applicant’s arguments that the word “law” can only be interpreted with the meaning of a “written legal act”. The Board also rejected the argument that the mark consists of designations that are abstract and imaginative. Although the word “law” may have different meanings, all of them refer to jurisprudence and to professionals with legal knowledge (lawyers). Thus, these meanings are closely related.
There was no dispute that the factual meaning of the mark was to point out that the legal services offered will be broader than those available on a daily basis. However, several law firms locally and abroad offer a wide range of legal services, which may include not only some of the traditional legal disciplines, but also representation in different financial and investment transactions, mergers and acquisitions, disputes, etc. Accordingly, the mark does not have a distinctive character and consumers will not recognize it as attributable to a single, specific provider of legal services.
Since the mark could not provide a sufficient level of differentiation from any other providers of legal services, the Patent Office’s decision was left in force and registration of the mark was rejected.
What we can learn from this case?
Use of different professional terms and slogans in trademarks is not prohibited even if they are of a specific nature. However, slogans or designations seen as descriptive or highly attributable to the nature of goods or services under which the application is filed generally cannot be registered as trademarks.
IP news from Lithuania
Exploiting IP: Švaros broliai’s story of success
Švaros broliai, the largest specialised car washing and cleaning services network in Lithuania, became one of the few local companies to have developed an effective franchise network. In 2020 alone, Švaros broliai concluded four transactions successfully transferring its tunnel car wash businesses to new operators under a franchise agreement.
Sorainen advised Švaros broliai on developing a franchised network of tunnel car wash sites and on other IP matters.
Read more about Švaros broliai’s story of success.
Commission for IP protection established in Lithuania
On a proposal by the Ministry of Justice, the Lithuanian Government has formed a Commission for Intellectual Property Protection.
The main purpose of the Commission will be to ensure a higher level of IP protection as well as to encourage cooperation between institutions responsible for particular fields of IP.
The Commission is expected to take part in coordinating positions on technology-based challenges related to IP such as artificial intelligence, 3D printing, rapid digitalisation, e-commerce, etc.
Lithuania: IP-related COVID-19 measures
Due to restrictions caused by the COVID-19 outbreak, the Lithuanian Government had suspended the terms for paying fees related to patents, trademarks and designs, as well as the terms for performing particular actions established under IP laws.
Suspension of terms was foreseen until the withdrawal of restrictions related to the free movement of persons and freedom of economic activities.
Since 1 June 2020, all these terms have been renewed. Suspended terms have been renewed for a period of time equal to the suspension period.
The first ever decision of the Patent Bureau Appeal Division on the invalidity of a trademark registration
Since the 2019 reform of the trademark system in Lithuania, the Appeal Division of the State Patent Bureau has been entitled to examine applications for invalidation of trademark registration.
On 29 April 2020, the Appeal Division took its first decision related to the invalidity of a trademark registration. The Appeal Division stated that the trademark “SIDERAL” and the later-registered “VIDERAL” have visual and phonetic similarity, also that both trademarks fall within the same product class. The Appeal Division ruled that there was confusing similarity between the trademarks concerned and, on this ground, invalidated registration of the trademark “VIDERAL”.