Trademark dispute settlement practice in Latvia. Well-known trademarks in Latvia.
Protection of trademarks in Latvia is governed by the Law „On Trademarks and Indications of Geographical Origin”, dated June 16, 1999 (LPZ/99), as well as Law „On Trademarks”, dated March 9, 1993, which establishes the registration procedure of those trademarks, which were applied for registration in the Patent Office of the Republic of Latvia before LPZ/99 entred into force - before July 15, 1999.
Likelihood of confusion
One of the most frequently encountered type of trademark disputes are disputes for likelihood of confusion for identical and similar trademarks.
LPZ/99 Section 7, Paragraph 1(1) establishes that „Trademark registration in accordance with the provisions of this law may be declared invalid if the Trademark is identical with an earlier Trademark and the goods or services for which it is registered is identical to the goods or services for which the earlier mark is registered”.
Section 7, Paragraph 1 (2) establishes, that trademark registration may be declared invalid if „in connection with its identity or similarity to, an earlier Trade mark belonging to another person and the identity or similarity of the respective goods or services, there exists a likelihood of confusion of the Trademarks or a likelihood of association between the Trade marks on behalf of the relevant consumers”.
The Law does not specifically list criteria, what should be followed, to establish that Trademarks are similar or not, what would also not be correct, as then Trade marks would be evaluated according to the specific statutory criteria, but the overall impression would not be evaluated. Such view is emphasized also in European Union (European Community) Court Case law.
The comprehensive evaluation of visual, phonetical, or conceptual similarity of Trademarks, have to be based on the overall impression, taking into account their distinguishing and dominating elements. The criterion “... there is a possibility that part of the society confuses...” suggests that the perception of Trademarks by the average consumer of the product or service plays the decisive role in the overall evaluation of the possibility of being mistaken. The average consumer typically perceives the Trademark as a whole and does not analyse its various details.
In the evaluation of the similarities between two Trademarks should not be limited to considering of one specific element of a composite Trademark and its comparison with another Trademark. On the contrary, when verifying the respective trademarks, the comparison should be based on viewing each of the trademarks in their entirety, which does not exclude that, in certain conditions, the overall impression left by the trademark in the memory of a certain part of the society is determined by one or several of its components. Only if all other elements of the trademark are not significant, the similarity evaluation may be based on the dominating element. This might specifically be the case if such element alone can dominate in the trademark image which remains in the memory of a certain part of the society in a manner that all other trademark components remain insignificant in the overall impression the trademark creates.
The Patent Office of the Republic of Latvia has practically identified number of key questions that allow to judge the likelihood of confusion:
• does the opposed trade mark has priority;
• compared trademarks are identical or similar;
• goods and services of opposed trade mark are identical or similar to goods and services of the opposing mark;
• due to identity or similarity of the trademarks and identity or similarity of the respective goods and services, there is a possibility that the consumers confuse the trademarks to be compared or perceive as interrelated.
The question about the earlier trademark can be resolved easily because the date of registration is unique for the trademark. However, it should be taken into account that, pursuant to the LPZ/99 Transitional Provisions, Section 6, in case the Community trademark has been registered or submitted for registration before May 1, 2004, its priority in Latvia shall be established from May 1, 2004, i.e. the date on which the Republic of Latvia became an EU Member State.
To determine whether the trademarks are identical, the evaluation includes each individual element of the composite trademark, the main element of the trademark, and the overall impression. The main element is established for the composite trademark.
For example, in the case of „Hama GmbH, KG” and OOO “NIZHNEKAMSKNETEORGSINTEZ”, trademarks “KAMA” and “HAMA” were compared, and the Board of Appeals concluded that the opposed figural trademark (HAMA) consists of black, bold font letter text “hama”, but such style of writing is not bright enough to draw the consumers’ attention specifically to it instead of the verbal element “HAMA”.
Thereby, when analysing the possibility of confusion of the trademarks, the focus should be on comparing specifically the verbal designation of the trademarks, namely, whether the disputed trademark “KAMA” is so similar to the dominating verbal designation “HAMA” of the opposed trademark that, in regard to the scope of the trademarks to be considered, there is a possibility that the respective consumers confuse the said trademarks or perceive them as interrelated.
Similarly, in case „NATUZZI” S.p.A. against „Helius Rīga” LLC Patent Office Board of Appeals concludes that - consumers will primarily perceive the verbal designations “DĪVĀNI UN DĪVĀNI” and “DIVANI & DIVANI” of the trademarks to be compared rather than the graphical representation of the trademarks.
An opposite conclusion was in the case of „Petit Vehicule” SAS against „PRINCESS” LLC – the role of designations “PRINCESS” and “PRINCESSE” in the trademarks to be compared is not clearly dominating. The contested trademark, apart from the verbal designation ”PRINCESS”, includes also its graphical part – a golden figure of a dancing female which takes the largest part of the trademark, and its graphical presentation is bright enough to remain in the memory of most of consumers.
Considering the above mentioned, it can be concluded that the main element is identified in composite trademarks, which also significantly determines the possibility of confusion. Therefore, for better protection of the trademark, it is significant to include several elements in it instead of merely verbal ones, because the validity of a trademark may sometimes be secured by another, for example, graphical element.
A significant role is also played by the location of the similar word or part of the word in the trademark. In the case of „ACCOR” Societe anonyme against the Real Estate Studies Support Centre, LLC, Patent Office indicates that the disputed and the confronted trademark contain an identical verbal designation “all seasons”, which is at the end in the disputed trademark and at the beginning of the opposed trademark. This factor is not a minor one considering the condition that the said designations are not the only elements in the trademarks. (...) The Board of Appeals agrees with the party representing the disputed trademark that the order of words in the verbal part and the mutual relationship of the words might a condition to be taken into account.
Another criterion considered by the Patent Office is the goods and services for which the trademark has been registered.
The Patent Office has emphasised that the compared trademarks may seem phonetically and visually close if the trademarks are used for coinciding or similar goods. Also, considering the identity and similarity of the respective goods and services, it is necessary to evaluate whether the consumers (...) may perceive the trademarks to be compared as interrelated, namely, whether the trademarks create an impression that the respective goods and services are of the same origin.
The Nice classification classes mentioned in registrations and often used in searches of conflicting trademarks are meant for registration management (administration) purposes and do not play a decisive role in the establishment of the limits of trademark exclusivity rights; respectively the limits of the respective classes are not the limits of the right.
A bright example is Nice classification Class 9 which, in general, is called as the hardware class, but includes mutually different products, such as computers and fire-fighting devices, CDs and cashiers, sunglasses and transformers, signal buoys and artificial Earth satellites, measuring apparatuses and life vests. As there have been many disputes regarding this issue, the practical experience has been secured internationally:
- goods or services cannot be considered as mutually similar relying on the fact that, in a registration or publication by the Body, they are mentioned in the same Nice classification class;
- Goods and services cannot be considered as mutually not similar relying on the fact that, in a registration or publication by the Institution, they are mentioned in different Nice classification classes.
Nevertheless, the fact that both trademarks are registered in one classification class alone can not be used as the only argument to prove the similarity of trademarks.
Comparisons should include evaluation of specific products and services, whereas, when determining which of them should be considered as mutually similar, not only the principal criteria incorporated in the Nice classification (similar functionality of the product, similar dominating raw material, similar principle of operation, the same business sector) should be used, but also whether the offered goods or services follow or do not follow the same distribution channels or reach the same points of selling.
Services are often acknowledged as similar to the goods which are used to render such services, etc. European Community Court (European Union Court) has indicated that evaluation of similarities between products and services should be based on all factors pertaining to the same products or services. Among others, such factors include the nature of the products or services, their addressee (who the end user is), the type of usage, and whether they compete or supplement each other.
Well-known trademarks in Latvia
The "Law on Trademarks and Geographical Indications" Section 8 provides bases for well-known trademark as a justification for refusal of registration - a trademark registration may be rejected or, if registered, the registration may be invalidated, if the trademark is identical or similar to, a trademark of another person, which, even though unregistered, was well-known, within the meaning of Article 6-bis of the Paris Convention, in the Republic of Latvia with respect to identical or similar goods or services, on the date of application of the applied for (opposed) registration of trademark (or the date of priority if priority has been granted).
WIPO recommendations "Joint Recommendations on the well-known trademark protection rules" may be used to judge well know status, particularly the degree of mark’s visibility in the publicē, length of use, scope and geographic range, promotional events, value and continuity of the existing registrations.
In the case of AB „Electrolux” against „Elux” LLC, the representative of the party submitting the objection specifies that trademark ELEKTROLUX is to be considered as well-known trademark in Latvia, because it has been used and promoted in Latvia for a long time and extensively, as proved by the registration of this trademark in the former USSR in year 1965. During the meeting of the Board of Appeals, the representative of the party submitting the objection also informs about the activities of company Electrolux and the considerable turnover in various countries worldwide.
However, it is essential that such statements are supported by evidence, as further indicated by the Board of Appeals, then the Board of Appeals, in principle, does not question that the opposed trademark ELECTROLUX has a known history in Latvia. However, with regard to Latvia, the representative of company Electrolux has not submitted any documents or materials allowing the Board of Appeals to conclude that trademark ELECTROLUX is a widely known trademark in Latvia as established in the LPZ/99”.
In another case A/S „Latvijas Balzams” against „Stolichny Trest, Zakritnoe aktsionernoe obshestvo”, the case materials include information that Stoličnaja vodka STOLICHNAYA RUSSIAN VODKA or a trademark close to it is known to consumers in Latvia for a long time, since 1948, and its sales volumes have been large. During the meeting, the representative of the licence holder of the opposed trademark A/S Latvijas Balzams mentions that vodka under trademark M 35 840 is still popular and available on sale, for example, in 2007 the sales volumes of the vodka were 1000 decilitres (or 10 000 litres). Also, vodka “Stolichnaya” is being exported in large volumes. The case also contains materials regarding the promotional campaigns for vodka “Stolichnaya” at various places of entertainment and recreation in Riga.
The opinion differs in the case „ACCOR” Societe anonyme against „Real Estate Studies Support Centre”. The party submitting the objection provides argumentation that ACCOR Societe anonyme owns a hotel chain in Europe with 86 hotels, and it cannot be excluded that such hotel might be opened also in Latvia. However, the Board of Appeals rejects such argumentation and concludes that in this case, this aspect cannot be applied because the Board of Appeals does not have proven evidence for recognisability of the opposed trademark “all seasons HOTELS is all you need” among Latvian consumers. Which, in fact, is highlighting one factor, against another.
The summary of Court practices of the Supreme Court of the Republic of Latvia specifies that nowadays, there is more and more widely acknowledged opinion that the respective trademarks do not even need to be undoubtedly confusable; it is enough to state that the opposed trademark or designation is a reproduction or imitation of a widely known trademark etc., and, therefore, the interests of the owner of the widely known trademark are affected negatively.
A widely known trademark owned by another person or entity may serve as the reason for rejection of registration or annulment of registration. The priority of the trademarks should be compared also in this case, but from a different point of view.
Namely, it is necessary to evaluate if the opposed trademark, which might also not be registered or be registered for other goods or services, has been widely known in Latvia already before the date of application for the disputed trademark or the priority date. Although, it is typically not possible to state a certain date when the respective trademark became widely known (because the issue concerns gradual formation of the impression of the respective group of consumers and not any concrete facts and events), it is strongly advisable to determine even an approximate, but maximum clear, timeframe. Often, such court adjudication regarding a widely known trademark will be used later on, in other disputes (sometimes also in administrative disputes and criminal proceedings), and it might not be sufficient to state that wide recognisability set in at some point in the past, “prior” to the date of application for or priority of the disputed trademark. Then, it might be necessary to re-evaluate the entire set of evidence for the widely known trademark. It is particularly difficult to use such evidence as later consumer opinion polls because such polls would largely reflect the current perceptions of the consumers rather than a condition in the past.
Therefore, also in cases regarding well-known trademarks, the issue of trademark priority is very important. However, the respective court practices should be viewed together with other aspects of protection of widely known trademarks.
Conclusions
Taking into account the above mentioned, it can be concluded that, as an EU Member State, Latvia has harmonised its legislation with the directives also applied to various disputes regarding trademarks. Latvia also applies various international regulatory acts, such as World Intellectual Property Organisation’s recommendations “Overall Recommendations Regarding the Regulations for Protection of Widely Known Trademarks”, 1999.
Since May 1, 2004, trademark legislation in Latvia is an area of the Community legislation, and a decisive role is played by the interpretation of the trademark law provided by the European Community Court and the General Court.
Nevertheless, it should be taken into account that each state may have its own specifics of handling disputes. Not always, if there is an unfavourable decision in one EU Member State, the decision will be the same in another Member State.
On the basis of earlier trademark acknowledging other trademark as invalid and in cases of infringement of trademarks, in case of identical signs and identical goods or services, the protection is absolute and the likelihood of confusion is presumed.
If, in an aspect of comparison – with regard to designations or with regard to products or services – identity cannot be stated, there is need for a comprehensive evaluation of the opportunity for confusion of the trademarks (designations) to be compared, and in particular: recognisability of the trademark in the market, the associations created by the designations to be compared, the degree of similarity between the designations and the degree of similarity between the goods or services.
The likelihood of confusion includes also potential interrelations or associations between the trademarks, which should not be taken as potential association of the external properties of one trademark with the properties of another trademark, but as potentially entailed consumer concept that the goods or services labelled with these trademarks might originate from the same company or, when appropriate, from economically interrelated companies.
A lower degree of similarity between goods or services in such evaluation can be compensated by a higher degree of similarity of the respective trademarks and vice versa.
A comprehensive evaluation of visual, phonetic, and conceptual similarity of trademarks should be based on the overall impression created by the trademarks, with special regard to the distinguishing and dominating elements of the trademarks. The higher the distinguishability of the earlier trademark, the higher the risk of confusion.
Therefore, wider protection should be given to the trademark with a high distinguishability it has itself or due to its reputation in the market. Furthermore, a decisive role in this evaluation is played by perception of the trademark among the average consumer of the respective products or services, who, for the purposes of such comprehensive evaluation, should be considered as reasonably well informed and reasonably observant and cautious, but normally perceives the trademark as en entirety and does not come to analysing it in detail, and whose attention may vary depending on the category of the products or services.
An essential question is implementation of the legislation applicable to widely known trademarks – both in relation to another trademark or designation used in commercial activities in connection with identical and similar goods or services and in cases when the products or services are not similar. In such cases, decisive is not the trademark confusion or mutual association test, but identification of potential reproduction or imitation of the widely known trademark, in connection with also other conditions in the case which may include defendant’s potential dishonesty, abuse of consumer perception in the interests of the defendant (causing the consumers to associate the defendant’s trademark with the owner of the well-known trademark) or other market distortion, damage to the distinguishability of the widely known trademark or its reputation, or other damage to the interests of the owner of the widely known trademark.
Valters Gencs
Patent and Trademark Attorney
Gencs Valters Law Firm, Riga
Email: valters.gencs@gencs.eu Tel: +371 67 24 00 90