Trademarks in Lithuania: likelihood of confusion and opposition
If you find out that a third party infringes your registered trademark, you can take legal actions to stop the infringement. In this article you will find out what is considered an infringement according to Lithuanian legislation as well as how to defend your mark.
Cases when can a trademark be declared invalid
According to the Art. 6 of Law on Trademarks of the Republic of Lithuania (hereinafter – the Law), a mark shall not be recognized as a mark and shall be refused registration if the sign is of such a nature as to mislead the public, for instance as to the nature, quality or geographical origin of the goods and/or services.
In addition, according to the Art. 7 of the Law, trademark registration may be declared invalid if the mark is:
- Identical with an earlier mark, and the goods/services for which the later mark is registered are identical with the goods/services of the earlier mark;
- Identical with or similar to an earlier mark and because of the identity or similarity of the goods/services covered by the marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier mark;
- identical with, or similar to, an earlier Community trade mark, even if goods/services are not similar, where the earlier Community trade mark has a reputation in the EU and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark;
- identical or similar to the earlier mark, even if goods/services of the marks are not similar, where the earlier mark has a reputation in Lithuania and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
According to the Art. 38 of the Law on Trademarks, the owner of the earlier mark has an exclusive right to prevent all third persons from using any identical or similar mark if there is a possibility to confuse the public. Following the Art. 18 of the Law, the opposition regarding a registered trademark can be made within 3 months of publication in the official bulletin.
Trademark similarity and likelihood of confusion
The Patent Office of the Republic of Lithuania has established the guidelines which shall be followed in order determine whether two trademarks are identical or similar.
First of all, it shall be determined whether the classes according to the Nice classification and the list of goods overlap between the trademarks. It shall be determined whether such overlap can cause confusion and impression and the goods/services belong to the same manufacturer/provider.
Secondly, visual and phonetic similarities of two trademarks as well as their meaning are determined. Minor differences of two trademarks shall not held important. The consumers take into consideration general impression of the trademark, not individual parts of it. If similarities between trademarks may lead consumers to believe that the later trademark belongs to the owner of the earlier mark or is somehow connected with the owner of the earlier mark, both trademarks will be declare similar.
When it comes to visual similarities, it shall be taken into consideration whether the trademarks have the same letters, are the letters arranged in the same way. Even if the letters in the trademarks are different, they might be pronounced similarly and vice versa.
It is also important to analyze strong and weak parts of each mark. Strong part of the mark, shows distinctiveness of the mark, separates it from other marks. Weak parts are usually prefixes, suffixes, endings or clusters of letters which have no meaning on their own but can help to construct a word. If the strong parts of the marks are similar, therefore the trademarks are declared similar. However, weak parts of the mark are also important, for example, trademarks Biodetox and Biologo-detox, Zeno and Zero were declared not similar due to the distinctiveness of the weak parts of the word. So weak parts can also differentiate the two trademarks.
If a later trademark is similar to a mark which was registered earlier, the owner of an earlier mark can file an opposition to the Patent Office of the Republic of Lithuania.