Vilnius, 26 th June, METIDA Law form of Reda Žabolien. By Inga Lukauskien. METIDA Law firm of Reda Žabolien

Transcription

1 Public Order, Morality and Bad Faith By Inga Lukauskien METIDA Law form of Reda Žabolien Vilnius, 26 th June, 2009

2 I. Public Order, Morality This requirement has various objectives: it ensures that a sign which use is illegal will not be used as a trade mark even though only these grounds would not be sufficient to refuse the registration of a trade mark; it prevents a possibility to acquire an advantage with such signs, to attract more attention from customers and thus to distort natural conditions of competition; on the basis of such a requirement exclusive rights are not granted to privilege signs which contradict to morality and public order; it ensures the balance between the rights given in the democratic society and compliance with the laws; it limits possibilities to use racist, discriminative and offensive signs in commercial activities by which social interests of the society can be damaged; such a requirement limits possibilities to encourage criminal activities and terrorism.

3 Sources of the Law Art. 6 quinquies, part B, point 3 of the Paris Convention for the Protection of Industrial Property of 20 March 1883 Art. 3, part 1, point f of the First Council Directive to approximate the laws of the Member States relating to the trade marks (89/104/EC) Art. 7, part 1, point f of the Council Regulation on the Community trademark Art. 6, part 1, point 6 of the Law on Trade Marks of the Republic of Lithuania Art of the Rules on the Registration of Trademarks ZR/03/2004

4 Marks contradicting to public order 1. Words specified as unused in dictionaries of the Lithuanian language DVIRA IO ŽYNIOS KARALISKAS

5 2. Barbarisms

6 Contradictory practice MAMAS

7 Trademarks contradicting to morality 1. Blasphemous: JESUS 2. Slang, offensive: BITCH 3. Propagating aggressiveness

8 4. Propagating consumption of drugs: EXTAZA 5. Names and surnames of recent or current well known persons: GEDIMINAS 6. Propagating racism marks, Nazi symbols, names and surnames of recent or current well known acting presidents, names or pictures of criminal leaders or terrorists, etc..

9 Not contradicting to morality: ODALISQUE MANAGE A TROIS

10 Contradictory practice

11 KAMASUTRA

12 OHIM practice: The standards of a reasonable person with normal levels of sensitivity and tolerance must be applied (R 495/2005-G SCREW YOU; CD Filing No , CTM COCAINE) It is necessary to consider the context t in which h the mark is likely l to be encountered, assuming normal use of the mark in connection with goods covered by the registration (R 495/2005-G SCREW YOU; CD Filing No , CTM COCAINE) The registration can only be contrary to public policy if an inducement, endorsement or trivilisation necessarily follows from the normal use in connection with the goods at hand (CD Filing No , CTM COCAINE) The question whether a trade mark can be registered under Article 7(1)(f) of CTMR is separate from the question whether it can be used (R 495/2005-G SCREW YOU)

13 Signs which severely offend the religious sensitivities of a substantial group of the population are also best kept off the register, if not for moral reasons, at least for reasons of public policy, namely the risk of causing public disorder (R 495/2005-G SCREW YOU) Signs which appear to glorify terrorism or offend the victims of terrorism should not be registered (Case R 176/ BIN LADEN). From time to time, the general public in the Community encounter words on imported goods and services which, if used conversationally in their own language, might be found shocking. Nevertheless, they are understood for what they are, namely as neutral foreign words carrying an unfortunate meaning in the native tongue (Case R 558/ REVA The electricity it Car, Case R 74/ ETA EARTH TO AIR SYSTEMS). The liability of a word mark to the absolute grounds of Article 7(1)(f) CTMR must be assessed on the basis of any usage, not necessarily formal, that the public makes of a given language. Therefore, the meaning of a word in slang may, in principle, lead to an objection, even if in normal usage it does not have an unfavourable connotation. However it is doubtful that the mere fact that the two words have, alone or in combination with each other, a sexual connotation should be regarded as offensive and that it justifies the rejection of the mark on account of public policy or accepted principles of morality (case R 111/ DICK & FANNY).

14 Conclusions The mark is considered as contradicting to morality or public order only when: 1) its content, i.e. the image or the meaning of the words that comprise the mark are of similar nature (e.g. BITCH); 2) the meaning of a mark is clear and cannot be interpreted otherwise (ODALIOSQUE, MENAGE A TROIS); 3) the mark should be assessed in respect of the average user considering goods or services for which it is registered (class 33 goods and the name of the grand duke).

15 II. Bad Faith Sources of the Law: Article 10bis of Paris Convention for the Protection of Industrial Property of March 20, 1883 Article 7 part 3 of the Law on Trade Marks of the Republic of Lithuania Bad faith case study of Office for Harmonization in the Internal Market Case law

16 Case law of the court of the Republic of Lithuania First, the court must determine whether the plaintiff holds subjective rights to the mark in dispute, where the plaintiff requests declaration of trade mark registration invalid on the grounds of bad faith (for the purposes to defend the said rights) (ruling of the Supreme Court of Lithuania of March 26, 2003 in the case 3K-3-374/2003 METAXA- ALEXANDER). This case also defined a rule where holding and implementation of exclusive rights to industrial property, including trademarks, in the manner prescribed by laws, by no means demonstrate te acts of unfair competition, just as intent t to acquire exclusive e rights to trade marks in the manner prescribed by laws does not ipso facto evidence acts of unfair competition. The court has also stated that the fact that trade mark in dispute was not used does not ipso facto qualify as critical, when dealing with acts of unfair competition on the part of the defendant with regard to the plaintiff.

17 Another rule of paramount importance was defined by the Supreme Court of Lithuania in the ruling of April 14, 2003 in case 3K-3-482/2003 Pfeil Zahnschmerz-Tabletten, i.e. situation where a person files for registration of trade mark on his own account, even with no bona fide intentions to use the said mark, with subjective rights (in broad sense) held by another person, who possibly filed for registration of the same mark at a later date, shall not be deemed as one consistent with honest practices in industrial or commercial matters, and shall therefore be deemed act of unfair competition, contrary to the said practices. Subsequently, already applying article 7 paragraph 3 of the Law on Trade Marks of the Republic of Lithuania a (2000), and with regard to Bad faith case study by the Office for Harmonization in the Internal Market, the courts have improved the said rule, stating, that another criterion material when dealing with the fact of bad faith, was the fact whether the defendant was or could have been aware (at the moment the application to register trade mark in dispute was filed) on respective subjective right, in broad sense, of another person (i.e. person deemed the true source of respective sign, irrespectively of registration of the sign in his name (ruling of the Supreme Court of Lithuania of May 10, 2006 in case 3K-3-325/2006 TechnoService).

18 Subsequently, the court explained that terms subjective right in broad sense and true source are used in reference to personal good faith, describing a person who developed certain trade mark and manufactures goods marked thereby or marks services provided (ruling of the Supreme Court of Lithuania of April 22, 2008 in case 3K-3-250/2008 REVIVOR) In this case, the court stated t that t terms of bad faith and unfair competition, where the parties in dispute represent competitors, are essentially the same (term of bad faith is broader than that of unfair competition). Declaration of a trade mark registration invalid on the grounds of unfair competition means that the defendant, when filing for registration of a trade mark, acted in bad faith, specifically with regard to the other party in dispute, i.e. the plaintiff, rather than acting in bad faith in general, with regard to indefinite (likely unlimited) range of entities (ruling of the Supreme Court of Lithuania of September 10, 2003 in case No 3K-3-781/2003 IKRA LOSOSIOVAJA ZERNISTAJA)

19 The Court of Appeal of Lithuania in the ruling of 3 December 2007 in case 2A-180/2007 (MONTBLANC vs MONT BLANC) confirmed rule established by the Office for Harmonization in the Internal Market, i.e. where information on an earlier mark is accessible in the trade mark data base, the defendant is presumed to be aware or could have been aware of an earlier right. In this case, the court also applied rule stated by the Office for Harmonization in the Internal Market, in Bad faith case study, i.e. cases, where a trade mark registered in national patent bureau is identical or misleadingly similar to European Union trade mark, shall be deemed application filed in bad faith. Panel at the Court of Appeal of Lithuania, in ruling of May in case 2A-333/09 (BUDDA BAR vs LA BUDDA BAR), with regard to the facts evidenced in the case, i.e. that trademarks of the plaintiffs are recognised throughout the world, they have an adequately long history, held that, given the duration the trade mark of the plaintiffs was used and registered, popularity in a vast geographical territory, this fact may be interpreted to the effect that the defendant, when filing application for registration of the trade mark in dispute, was or could have been aware on respective subjective right (in a broad sense) held by another person to respective sign (who has not registered the sign in Lithuania), while acting in bad faith with view to facilitate personal use of reputation of a sign held by another person and acquired abroad.

20 In practice, bad faith is mostly manifested as follows: 1. Application of a commercial agent MARTINI vs. IBERO vs. vs. POKEMON

21 2. Use of reputation of earlier mark for identical or similar goods vs. AKAI vs. AKAI NOKIA vs.

22 vs. vs. vs. MERCEDES-BENZ KLUBAS

23 3. Registration of foreign trade mark in own name, with no intention to use it POLYGYNAX

24 4. Application is filed on account of competitor for a similar trade mark vs. vs. 5. Registration of name of a known person, related to specific goods RENATA 6. With view to mislead regarding use of official symbols

25 Situations to be dealt with 1. Relation between declaring registration of a mark invalid on the grounds of bad faith (article 7 paragraph 3 of the Law on Trade Marks) and declaring registration of a mark invalid on the grounds of similarity to earlier Community trade mark for not identical and dissimilar goods ( article 7 paragraph 1 subsection 7 of the Law on Trade Marks) 2. Difference between terms trade mark with reputation and well-known trademarks

26 3. Evaluation of slavish imitation vs. vs.

27 THANK YOU For more information please contact: Inga LUKAUSKIENE Attorney at Law, Patent attorney Metida Law Firm of Reda Zaboliene Business center VERTAS, Gyn j str.16, LT Vilnius, Lithuania Tel: /31/32, fax: , inga.lukauskiene@metida.lt