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Lithuanian courts examine legal relationship between trademarks and corporate names

  • The plaintiff sought to change the name of UAB KF/SIK Vilko takas on the ground that such name was confusingly similar to the plaintiff’s mark VILKO TAKAS.
  • The courts found that it was necessary to assess whether the services covered by the registered trademark and the activities for which the corporate name was registered were sufficiently distinct.
  • The courts also had to determine whether the co-existence of almost identical domain names can be compatible with the provisions of Regulation 874/2004.

Background

The legal entity UAB KF/SIK Vilko takas was sued in a civil case for alleged infringement of the plaintiff’s IP rights, including the rights in its trademark, domain name and corporate name. The plaintiff sought to change the name of the legal entity on the ground that such name was confusingly similar to the plaintiff’s trademark VILKO TAKAS.

Corporate names v trademarks

The courts (i.e., the Vilnius Regional Court, the Court of Appeal of Lithuania and the Supreme Court of Lithuania) stated that neither lex specialis, which regulates the legal relationship between trademarks and corporate names, nor competition law, which considers the name of a legal entity as infringing trademark rights, are expressly related to the identity or similarity between the good and/or services and the activities of the legal entity.

However, the courts concluded that, with regard to the legal relationship between corporate names and trademarks, one must consider whether the legal entity was entitled, at the relevant date, to carry out the same or similar activities as those relating to the goods and/or services covered by the registered trademark. The courts emphasised that, in such situations, it is necessary to assess whether the services covered by the registered trademark and the activities for which the corporate name is registered are sufficiently different.

Corporate names v corporate names

Although the legislation does not expressly consider the similarity or dissimilarity of the parties’ activities when it comes to the legal relationship between corporate names, the activities of the legal entities should also be compared. A finding of similarity could influence the assessment of the likelihood of confusion between the names of legal entities: the greater the similarity between the activities of the legal entities, the greater the likelihood of confusion between their names.

Domain name protection

The plaintiff also requested that the defendant transfer the domain name ‘vilkotakas.com’ to the plaintiff on the ground that it was the proprietor of the earlier trademark VILKO TAKAS and of the domain name ‘vilkotakas.lt’. The plaintiff also claimed that the defendant was aware of its earlier rights but had nevertheless registered the domain name ‘vilkotakas.com’.

The dispute arose in the present case because of the implementation of legal protection for domain names. The courts had to determine whether the co-existence of almost identical domain names can be compatible with the provisions of Regulation 874/2004 laying down public policy rules concerning the implementation and functions of the ‘.eu’ top-level domain and the principles governing registration, where the domain names are used to display different goods and services.

The courts noted that, in order to find that the registration of the domain name in question was unfair, it was not sufficient to establish that the domain name created a likelihood of confusion – it was also necessary to consider whether such confusion was intentional (e.g., to attract internet users).

In the absence of sufficient evidence establishing that the earlier sign was known and/or widely used, it was not possible to prove that the defendant intended to create confusion; this was confirmed by the fact that the domain names were used for different goods and services. Therefore, the defendant’s deliberate intent to cause confusion between its domain name and the plaintiff’s domain name was not proven. Accordingly, the court admitted that the co-existence of almost identical domain names was possible.

It should be noted that the Lithuanian legislation does not directly regulate the legal protection of domain names. In addition, the provisions of Regulation 874/2004 are applicable only indirectly. Thus, in cases such as this one, the courts must inevitably rely on EU case law to create the national jurisprudence.

AAA LAW represented the defendant in this case.

 This article first appeared on WTR Daily, part of World Trademark Review, in (Oct/2019). For further information, please go to www.worldtrademarkreview.com.

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