Following yesterday’s blog post about the trade mark changes in the UK, Class 46 has received a number of contributions from other EU Member States, which will be posted over the next few days.
This article on the new law and fees in Lithuania has been contributed by Vilma Dauskurdiene:
Starting 1 January 2019 the new version of the Trade Mark Law implementing the provisions of the EU Trademark Directive 2015/2436 came into force in Lithuania and brought changes in the field of trade mark registration and protection. The most significant changes set in the new Law are:
Abolition of the requirement of graphic representation
As of 1 January 2019, applicants can file a trade mark 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 trade marks 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 opened wide possibilities for registration of non-traditional signs, such as holograms, motion marks, sounds and colours.
Certification marks as a new kind of trade marks
The new Trade Mark Law recognizes certification marks.
Changes in stage of trade mark registration
The new Trade Mark Law extends absolute grounds for refusal of registration and sets prohibitions concerning designation of origin; geographical indication; traditional specialities guaranteed; traditional terms for wine; and plant variety rights protected at EU or international level which are used in a sign.
The new Trade Mark Law changes trade mark registration procedure from post grant to pre grant. That means after the State Patent Bureau conducts trade mark examination and ascertains that the mark satisfies absolute grounds for registration, the mark is registered after opposition term expires or, if an opposition is filed, after the opposition procedure ends.
The new Trade Mark Law introduces observations of third parties. Any interested persons may submit to the State Patent Bureau written observations as to the capability to register a trade mark 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 trade mark 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.
An opposition is possible based on relative grounds only. The bad faith ground disappeared from the list of relative grounds. An interested person may ground its claim on bad faith only in trade mark invalidation cases.
The essential change in opposition proceedings is indeed that the applicant is entitled to claim proof of the genuine use of the opposing right if it is more than five years old. In the absence of proof of use, the opposition will be rejected in whole or in part. The new Trade Mark Law sets non-use of a trade mark as a measure of defence not only in opposition but also in invalidation of the trade mark proceedings.
Mandatory pre-trial procedure
In order to reduce the workload of courts, a mandatory pre-trial administrative procedure is established. Before the new Law, the trade mark could be recognized as invalid or cancelled only by filling a claim to the court. After the new Trade Mark Law came into force the Appeals Division of the State Patent Bureau is competent to examine such kinds of disputes and adopt decisions.
Examination of opposition remains the competence of the Appeals Division of the State Patent Bureau. However, the new Trade Mark Law stipulates that the opposition shall be filed within three months from the date of publication of the trade mark application but not after the publication of the trade mark registration.
The decisions of the Appeals Division of the State Patent Bureau can be appealed 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 is shortened from six months to three months after adoption of the decision.
The new Trade Mark Law sets a possibility to settle trade mark disputes in an amicable way on the initiative of both parties by filing a common request or by using mediation. Not less than two months but not longer than a one year term is provided for amicable dispute settlement.
Elaborated rights and restrictions of the trade mark owners
In addition to rights of the trade mark owners provided in the old law, the new wording elaborates the rights of the trade mark owner in case of transit where the trade mark 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 the person transporting the goods proves that the trade mark 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 Trade Mark Law sets out that a person who violates the rights of the trade mark owner must be liable for non-material damage. The monetary amount of this damage is determined by a court.
The entry into force of the new Trade Mark Law resulted changes to many official fees in the Law on Fees for Registration of Industrial Property Objects, which also came into force on 1 January 2019.
It is noted that the official fees have been increased. For example, the basic fee for trade mark registration by combining two currently applied fess (trade mark application filing and trade mark registration fees) increases from €138 to €180, if only one class of goods or services is indicated in application. For each subsequent class of goods or services an additional fee is paid, which increases from €34 to €40.
The fee for filing an appeal increases from €34 to €60 and for opposition from €92 to €160.
The Law on Fees sets a new fee of €150 for accelerated examination and €180 for examination of request for invalidation or cancellation of a trade mark registration before the Appeals Division of the State Patent Bureau.
Summarizing changes in the law, trade mark owners now have new opportunities for registration of marks and developing strategies for protecting their trade marks and can expect an easier and faster administrative process to achieve results.
Vilma Dauskurdiene is a Trademark and Patent Attorney with AAA Law