Significant changes in trademark regulation in Lithuania
Legal trademark protection in Lithuania seeks harmonisation with other legal acts valid in European Union. Since 1 January 2019 a new version of the Trademark Law implementing the provisions of the Directive (EU) 2015/2436 of the European Parliament and of the Council European Union of 16 December 2015 to approximate the laws of the Member States relating to trademarks, will come into force.
Coming changes bring to Lithuania innovations in trademark registration and protection, as a result of trademark owners gain new opportunities to register trademarks, develop strategies for protecting their trademarks and expect for an easier and faster administrative process to achieve results.
It’s important to know that next year:
- The requirement of graphic mark representation will be abolished;
- Registration of certification mark will be possible;
- Changes in stage of trademark registration will be set;
- A new institute of third parties observations will be set;
- Mandatory pre-trial procedure will be established;
- Trademark use requirement will be allowed;
- Rights and restrictions of the trademark owners will be elaborated;
- Recovery of non-material damage will be established.
For more details on every change please read further.
Abolition of the requirement of graphic representation
Currently, the Lithuanian Trademark Law indicates that marks, with respect to which legal protection under this Law is applicable, may consist of any signs capable of being represented graphically. Accordingly the applicants when filling the trademark application must provide graphical representation of the sign.
As of 1 January 2019, applicants will be able to file a trademark without having to provide a graphical representation of the sign. The important requirement becomes that using developing technologies, the sign will have to be represented on the Register of the Lithuanian trademarks in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its owner. This will open wide possibilities for registration of non-traditional signs, such as holograms, motion marks, sounds, colours and the like.
Certification marks as a new kind of trademarks
Currently, protection of certification marks is not provided under the Lithuanian Trademark law. The marks that certify some quality could be protected as collective marks.
The New Trademark Law recognizes certification marks. Certification mark is a sign which is indicated as certification mark in the application and which is capable of distinguishing goods or services, which are certified by the owner of the mark, in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services that are not so certified.
Changes in stage of trademark registration
The New Trademark Law expends absolute grounds for refusal of registration of a mark by adding additional grounds, such as a sign, shall not be recognised as a mark and shall be refused registration or the registration of a registered mark shall be declared invalid if designation of original; geographical indication; traditional specialities guaranteed; traditional terms for wine; plant variety rights protected at EU or international level are used in a sign.
A possibility to request accelerated examination of application and trademark by paying additional fee is set in the New Trademark Law. Currently the accelerated examination is possible only in trademark infringement cases (a claim filed by another person, warning about infringement of rights of the trademark owner). By correlating accelerated examination with paying additional fee, a necessity to prove need of urgent examination and submit evidence for infringement disappears.
Procedure for disclaimers of the mark will be renounced.
Pursuant to the new legislation only one application fee should be paid at the time of filling of the trademark application. Currently we have two fees: one fee for filling of a trademark applicant and the second fee for trademark registration, publication and registration certificate.
The New Trademark Law changes trademark registration procedure from post grant to pre grant. That means after the State Patent Bureau conducts trademark examination and ascertains that the mark satisfies absolute grounds for registration, the mark is registered after opposition term expires or, if the opposition is filed, after opposition procedure ends.
A new institute of third parties observations
The New Trademark Law sets one more novelty that cannot be found in the current law – observations of third parties. Any interested persons may submit to the State Patent Bureau written observations as to the capability to register a trademark based on absolute grounds ex officio. Such persons shall not be parties to the proceedings before the State Patent Bureau. The observations shall be communicated to the applicant only. Third parties’ observations shall be submitted before the end of the opposition period or, where an opposition against the trademark has been filed, before the final decision on the opposition is taken. Such procedure shall give a possibility to protect public interests without entering into dispute.
Mandatory pre-trial procedure
In order to reduce the workload of courts, a mandatory pre-trial administrative procedure is established. Currently, the trademark can be recognized as invalid or cancelled only by filling a claim to the court. After the New Trademark Law comes into force the Appeals Division of the State Patent Bureau will be competent to examine such kind of dispute and adopt decisions.
Examination of opposition remains for competence of the Appeals Division of the State Patent Bureau. However, the New Trademark Law stipulates that the opposition shall be filed within three months from the date of publication of the trademark application but not after the publication of the trademark registration.
In case the interested person is not satisfied with the decision adopted by the Appeals Division of the State Patent Bureau, it shall be possible to appeal it by filing a claim to the Vilnius District Court that hears such cases as the first instance court. It is important to note, that the term to appeal decisions of the Appeals Division of the State Patent Bureau shall be shortened from six months to three months after adoption of the decision.
Although courts will hear other claims in trademark disputes, new administrative procedure offers a possibility to settle dispute in a quicker and cost-efficient way.
The New Trademark Law sets a possibility to settle trademark disputes in an amicable way on initiative of both parties by filing a common request or by using mediation. Not less than two months but not longer than one year term is provided for amicable dispute settlement.
Trademark use requirement as one of measure of defence
The New Trademark Law sets non-use of trademark as measure of defence both in opposition and invalidation of the trademark proceedings.
The Law provides a right to request for use evidence of an earlier mark. In case of an opposition, the owner of earlier trademark must prove that the earlier mark has been put into genuine use within a period of five years before filling date of the later trademark application or its priority date.
In case of invalidation of the trademark, the proof of genuine use shall include period of five year before filing date of a request for trademark invalidation.
Where the owner does not provide any evidence of genuine use, opposition or request of invalidation of the trademark based on earlier trademark shall be dismissed
In such way an obligation for owners of the earlier trademarks is set to put into genuine use their trademarks, not to usurp market with their “sleeping” marks and not to abuse with their trademark rights.
Elaborated rights and restrictions of the trademark owners
In addition to rights of the trademark owners provided in the current version of the Trademark Law, the new wording elaborates the rights of the trademark owner in case of transit where the trademark owner may prevent other persons to enter such goods to the Republic of Lithuania without placing goods freely on the market of the Republic of Lithuania, unless person transporting the goods proves that the trademark owner is not entitled to prohibit placing of those goods on the market in the country of final destination.
Recovery of non-material damage
The New Trademark Law sets that a person who violates the rights of the trademark owner must be liable for non-material damage. The monetary amount of this damage is determined by court
Entry into force of the New Trademark Law, shall result in many official fee changes in the Law on Fees for Registration of Industrial Property Objects, which also comes into force since 1 January 2019.
It is noted that official fees increase. For example, the basic fee for trademark registration by combining two currently applied fess (trademark application filing and trademark registration fees) increases from 138 EUR to 180 EUR, if only one class of goods or services is indicated in application. For each subsequent class of goods or services additional fee is paid, which increases from 34 EUR to 40 EUR.
Fees for filing appeal increases from 34 EUR to 60 EUR and for opposition from 92 EUR to 160 EUR.
The Law on Fees sets a new fee of 150 EUR for accelerated examination, 180 EUR for examination of requests for invalidation or cancellation of the trademark registrations before the Appeals Division of the State Patent Bureau.
Summarizing changes in the laws, trademark owners will have new opportunities for registration of marks, developing strategies for protecting their trademarks and expecting for an easier and faster administrative process to achieve results.
Meantime, if future trademark owners wish to save costs, it is a high time to hurry up and apply for registration of their trademark.