眾律國際法律事務所

Introduction:

Language: Lithuanian

Capital: Vilnius

Area: 65,300km2

Population: 2,831,670 (2017)

Currency: Euro

Religion: roman Catholic (77%)

Geographical situation: is a country in Northern Europe. One of the three Baltic states, it is situated along the southeastern shore of the Baltic Sea, to the east of Sweden and Denmark. It is bordered by Latvia to the north, Belarus to the east and south, Poland to the south, and Kaliningrad Oblast (a Russian exclave) to the southwest.

International treaty membership:

Singapore Treaty on the Law of Trademarks (August 14, 2013)

Trademark Law Treaty (April 27, 1998)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (November 15, 1997)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (February 22, 1997)

Convention Establishing the World Intellectual Property Organization (April 30, 1992)

Paris Convention for the Protection of Industrial Property (May 22, 1994)

Legislation:        

Law on Trademarks of October 10, 2000, No. VIII-1981 (as amended on 8 June 2006 – by Law No. X-651)

Government Institutions:

State Patent Bureau of the Republic of Lithuania.

Type of trademark:

Registrable as a trademark are all distinctive and graphically representable signs, such as words, personal surnames, acronyms, artistic pseudonyms, business names of legal persons, slogans, letters, numerals, drawings, emblems, three-dimensional forms, the three-dimensional form of goods, their packaging or containers, colours or combinations of colours, their compositions, sound marks (represented as musical notation, sonogram or oscillogram) and combinations of the mentioned signs. Further, registrable as a trademark are movement marks, holograms and position marks.

The following trademark types are registrable: trade marks, service marks, collective marks and trade names.

Ground for refusal :

Absolute ground for refusal:

A sign shall not be recognized as a mark and shall be refused registration or the registration of a registered mark shall be declared invalid if:

-the sign cannot constitute a mark ;

- the sign is devoid of any distinctive character;

-it has become customary in the current language or in the bona fide and established practices of the trade;

-it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, the mode of production or other characteristics of the goods and/or services;

-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;

-the sign is contrary to accepted principles of morality or public policy, including ethics of society and humanitarian principles;

-the sign consists exclusively of the shape which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods;

-the sign consists of the official or traditional (abbreviated) state name of the Republic of Lithuania, of armorial bearings, flag or other state heraldic objects or any imitation from a heraldic point of view, also official signs and hallmarks indicating control and warranty, stamps, medals or marks of distinction, unless the permission for their use in a mark has been issued according to the established procedure by the institution authorized by the Government of the Republic of Lithuania;

-it consists of signs the registration of which has not been authorized by the competent authorities of other states or international organizations and the registration of which is to be refused or invalidated pursuant to Article 6ter of the Paris Convention;

- it is a sign of high symbolic value, in particular a religious symbol;

-it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in the Republic of Lithuania is of such a nature as to mislead the public as to the true place of origin of the goods.

Relative ground for refusal:

Registration of a mark shall be declared invalid if the mark is:

- identical with an earlier mark, and the goods and/or services for which the mark is registered are identical with the goods and/or services for which the earlier mark is applied for or is registered;

- identical with or similar to the earlier mark and because of the identity or similarity of the goods and/or 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 the mark recognised as well-known in the Republic of Lithuania in the manner prescribed by Article 9 of this Law, the proprietor of which is another person, or because of its similarity to the mark it is liable to mislead the public;

- identical with the business name of a legal person or possessing a misleading likelihood to the business name of a legal person, whose proprietor is another person who acquired the right to that name in the Republic of Lithuania prior to the date application for registration of the mark or the date of the priority, if on the day specified in the date the legal person had a right to engage in identical or similar trade to which the goods and/or services covered by the registered mark may be attributed;

- identical with the geographical indication protected in the Republic of Lithuania or possessing a misleading likelihood thereto, except for the indication incorporated in the mark as the disclaimer, for which registration is applied for by a person entitled to use the geographical indication;

- identical with the protected industrial design or any other object of industrial property, literary, scientific or artistic work protected under the copyright, the name or surname or artistic pseudonym of a famous person, or the portrait of another person or its likelihood to the above is misleading, except in cases where consent has been granted by the owner of the rights or the successor to them;

Application content:

The representative may also file an application on behalf of the applicant. Foreign natural persons who are not permanent residents of the Republic of Lithuania or any other EU Member State and legal persons of foreign states who do not have a branch office or representative office registered in the Republic of Lithuania or a registered office, a branch office or a representative office in any other EU Member State.

An application for the registration of a mark shall consist of:

- a request for the registration of a mark and issuance of the trade mark certificate signed by the applicant or his representative;

- a document certifying payment of the fixed fee; 9 10

- the power of attorney given to a person, where the application is filed by an authorised person;

- a request to be granted priority (where appropriate);

- information identifying the applicant and his representative;

- a reproduction and description of the mark in respect of which registration is applied f

An application may contain a request for registration of one or more classes of goods and/or services. A fixed additional fee shall be payable for more than one class of goods and/or services indicated in the application.

Application process:

The State Patent Bureau shall conduct, within one month from the receipt of the application, a formal examination of the application documents: check whether or not the documents required have been filed and whether they comply with the formal requirements.

Having conducted an examination to the application the State Patent Bureau shall carry out an examination of the mark with a view to ascertaining whether or not it satisfies the requirements, and don’t meet any absolute ground for refusal.

If the application is accepted, and the protection is granted, the State Patent Bureau shall adopt a decision to register the mark and shall within ten days from the date of adoption of the decision send the decision and instruction to pay the fixed fee to the applicant or his representative.

After the applicant or his representative presents a document certifying the payment of the fee, the mark shall be registered in the Register of Trade Marks of the Republic of Lithuania. Information of the registered mark shall be published in the Official Bulletin of the State Patent Burea

Within a period of three months following the publication of the registered mark in the Official Bulletin of the State Patent Bureau, the interested persons may give to the Appeals Division a justified written opposition to registration of the mark on absolute and relative ground.

Refusal:

If the application does not comply with the requirement the State Patent Bureau shall notify the applicant or his representative thereof in writing, indicating the deficiencies and the required remedying. If the deficiencies in the application are not remedied within three months from the sending of the notification, the State Patent Bureau shall recognize the application as having not been filed and shall notify the applicant or his representative thereof in writing.

If the mark meets an absolute ground for refusal the State Patent Bureau shall adopt a decision to refuse the registration of the mark in respect of all or some of the goods and/or services. The decision which must indicate grounds and reasons for the refusal of the registration of the mark shall be sent to the applicant or his representative within ten days from the adoption thereof.

The applicant or his representative shall have the right to submit to the State Patent Bureau within three months from the day of sending of the decision to refuse registration a written request for a re- examination.

An applicant or his representative who objects to the decision adopted by the State Patent Bureau after the re-examination shall have the right to file with the Appeals Division of the State Patent Bureau (hereinafter - Appeals Division), within three months from the day of sending of the decision, a written appeal with a substantiated request for a review of the findings of the examination and a document certifying the payment of the fixed fee.

Following the examination of the appeal, the Appeals Division shall adopt one of the following decisions:

- to grant the appeal and to adopt a decision to register the mark in respect of all or some of the goods and/or services;

- to dismiss the appeal and to uphold the decision to refuse the registration of the mark.

Where the applicant or his representative objects to the decision of the Appeals Division, he shall have the right to appeal against the decision of the Appeals Division to the Vilnius County Court within six months from the date of adoption of the decision by the Appeals Division.

Rights of exploitation and related delay:

A mark shall be registered for a period of ten years from the date of filing of the application, and can be renewed each time for ten years.

The proprietor of a registered mark shall have an exclusive right to prevent all third persons not having his consent from using in the course of trade any sign:

- which is identical with the registered mark in relation to goods and/or services which are identical with those for which the mark is registered;

- where, because of its identity with, or similarity to, the registered trade mark for the identical or similar goods and/or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the registered trade mark;

Transfer and conditions:

The right to a mark applied for or a registered mark may be transferred, under the agreement, in whole or partly, together with other rights related to the activities of a legal person. This transfer shall be notified to the Patent office, the request for transfer shall contain:

- a request to record the transfer;

- a document certifying the transfer;

- a document certifying the payment of a fixed fee;

- the power of attorney issued to the representative (where appropriate).

Certification:

The State Patent Bureau shall issue a registration certificate to the proprietor of a registered mark or his representative. Certificate of the registration of a mark is a legal document certifying the entry of the mark in the Register of Trade Marks of the Republic of Lithuania and the exclusive rights of the proprietor of the mark to the registered mark.

Withdrawal and cancellation:

If the applicant or his representative fails to pay the fee within three months from the day of sending of the decision to register the mark, the application shall be deemed withdrawn on the decision of the State Patent Bureau.

The protection of a mark can be cancelled;

if the owner of the mark makes an opposition since the mark has been registered without his agreement.

If the mark meets absolute or relative ground for refusal, it shall be invalidated.

If the mark has become, in that part of business in which the good and/or service concerned is traded or supplied, the common name for goods and/or services for which it is registered, as a result of the treatment of the mark as a common name by the proprietor or of his inactivity or due to such treatment of the mark by the others;

If the mark has not been used for a consecutive period of five years.

Customs protection:

The holder of intellectual property rights or his representative shall be entitled to lodge an application in writing with the Customs Department under the Ministry of Finance for action to be taken by the customs authorities in order to protect the rights of the person, if he knows or suspects that goods infringing an intellectual property right are intended to be brought into the customs territory of the Republic of Lithuania.

This application must contain the description of the goods, information about the applicant and the proof that he is the right holder ( certificate of trademark).

Once the application is accepted, the protection will be granted for 1 year maximum.

If customs suspect some good to be infringing intellectual property, they should seize the goods and notify the right holder, who will be invited to make an inspection of the goods and take sample.

Then the right holder, within 10 days, will be allowed to claim before court for IP infringement.

If court, recognizes the goods detained by the customs authorities and seized by the court as infringing an intellectual property right and taking into consideration the requests of the holder of intellectual property rights or his representative (if filed), shall adopt a decision:

- to dispose of the goods outside commercial channels (recycle or utilise the goods and apply other similar measures) in such a way as to preclude injury to the holder of intellectual property rights, without compensation of any sort and at no cost to the State;

- to take, in respect of such goods, any other measures (at the request of the holder of intellectual property rights or his representative, transfer the goods to them or any persons indicated in their request and apply similar measures), which effectively deprive the persons concerned with unlawful delivery of detained goods of the economic benefits of the transaction. If the goods are transferred not to the holder of intellectual property rights or his representative, but to other persons indicated in their request, the court may obligate the persons to remove the trade marks, which have been affixed to the goods without authorisation;

- to destroy the goods at the defendant’s expense.

Sources:

WIPO.int:

Law on Trademarks of October 10, 2000, No. VIII-1981 (as amended on 8 June 2006 – by Law No. X-651)

Law No. IX-117 of December 21, 2000 on the Protection of Intellectual Property in the Field of Import and Export of Goods (2000)

Vincent Lagier