Lithuania: New Point of View on the Non-usage of the Mark

Some significant changes have been made within nine years of independent legislation of the Republic of Lithuania in the field of trademarks and service marks. One of the aspects of the protection of trademarks owner's rights that is becoming more important - the question of the usage of the mark. Following to the recent Law on Trademarks¹ the owner of the trademark isn't obliged to file the proofs of usage of its trademark with the State Patent Bureau. However every holder of the mark should consider this question seriously. The main reason why the owners of the trademarks should be more careful - the possibility to file a claim with the court asking to revoke the registration of the trademark due to its non-use.

The holder of the trademark should know that the provisions of the recent Law on Trademarks, which is conciliated with provisions of directive No. 89/104/EC, are modified comparing with the norms of the previous Law not in favour of the trademark’s owner.

Following to the previous Law on Trademarks and Service Marks Art. 24 the registration might have been revoked at the request of any interested person if it had been established that the mark had not been used or had not been the subject of serious preparations for commencement of use by the holder of the registration in the territory of the Republic of Lithuania without justifying cause within a period of five years preceding the date on which the judicial proceedings had been commenced. In determining, whether a mark has been used by the holder of the registration the following activities were considered to be use of the mark by such holder in the Republic of Lithuania where it was registered:

The plaintiff in such cases had to prove one of two things: that the trademark had not been used or had not been the subject of serious preparations for commencement of use for continuous five years from the date of registration until the last day before the day on which the claim had been filed. Therefore if the owner of the mark had any suspicions that his competitor or any other interested person had been planning to launch new product in the local market and, seeking to avoid any claims for the infringement of trademark owner's rights, had intended to file the claim for the revocation of the registration of this trademark for non-use, he had not been prohibited to start usage of the trademark even one day before the filing of the claim. In such cases the plaintiff was in worse position, because if the owner of the trademark had begun to use his trademark very short term before the day on which the claim has been filed, the court would have rejected such claims even if the trademark had not been used for five or more years continuously.

On the other hand it would have been a problem for the owner of the trademark to prove that the trademark had not been used for the serious reasons, such as restrictions on imports or other circumstances beyond the proprietor’s control, if it had not been the force majoure.

Following to the court practice in such cases the burden of proof is on the side of the plaintiff. It's the obligation of the plaintiff to prove that the trademark has not been used or have not been the subject of serious preparation for commencement of use for five continuos years. That is why the claim against the trademark WILD registration was rejected because the plaintiff failed to prove that attacked trademark had neither been used nor had not been the subject of serious preparations for commencement of use for five continuous years.

The nature of the evidences in such cases depends on the goods, for which marking the trademark is registered. For example, the production, import and sales of tobacco products are strictly controlled by the licensing system. Therefore if no licenses to produce, import or sell the tobacco products were issued in continuous five years, the non-usage of such trademark would be confirmed. The same rule would be applied for the use of trademarks as the denomination of medicines - it is allowed to import and sell the medicines if only they are registered with State medicines control office.

The more complicated plaintiff's task - to prove that the trademark has not been the subject of serious preparations for commencement of use. For example trademarks’ HUGO BOSS and BOSS HUGO BOSS registrations for class 34 goods marking were cancelled basing on the evidences, that there had been no licenses issued to import tobacco goods into Lithuania, and on the written documents, where the owner of the attacked trademarks himself had declared that he had not been intending to use his trademarks for marking of such goods.

The new Law on Trademarks changed the situation in the favour of the plaintiff in this type of cases.

Following to the new Law on Trademarks Art. 47, the registration of a mark may be revoked if, within a period of five years after the issue of the registration certificate, a genuine use of the mark has not been started by the proprietor of the mark in the Republic of Lithuania or the proprietor has not expressed serious intention to use the mark in respect of the goods and/or services for which it is registered, or if the mark has not been put to genuine use for a period of five continuous years, except in cases where the use of the mark was prevented by serious reasons, such as, e.g., restrictions on imports or other circumstances beyond the proprietor’s control. The determination of usage is left the same:

1. use of the mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in the Register of Trade Marks of the Republic of Lithuania;
2. affixing of the mark to goods or to the packaging thereof in the Republic of Lithuania solely for export purposes;
3. the mark shall be deemed to be used by its proprietor if it is used by another person with the proprietor’s consent.

The way how the trademark should be used in order to avoid the action of cancellation, remains the same – the mark should be physically used, for example, affixed to the goods. That is why the advertising of the mark would be probably considered only as the intention to use the trademark. The showing of the trademark in the Internet or offering of goods marked with the trademark probably would be acknowledged only as the intention to use if there will be no evidences proving the physical movement of such goods into the Republic of Lithuania.

In spite of the fact that new Law has been conciliated with provisions of EU legislation in this field, some norms were left unchanged. For example, the owner of the non-used trademark shall have the right to file the opposition against later trademark registrations until his registration is cancelled. In such cases the owner of the later trademark is forced to turn to the court asking to cancel earlier trademark registration due to non-use, because the examination of the non-usage of the mark is strictly attributed to the competence of the court.

The term "any interested person" in the sense of the new Law has not changed, too. However in determining who may be the interested person in such cases we should understand that this term does not simply mean any person seeking to cancel the trademark registration of the other person. This term should be interpreted in accordance with Art. 4 of Civil process code – any interested person has the right to turn to the court in order to protect his infringed or vexed right or the interest, protected by the law. That is why the claim on cancellation of the trademark BETAFERON registration has been rejected by the Court of Appeal. The medicine’s BETAFERON registration itself was acknowledged not sufficient to prove the plaintiff’s interest in the case. On the other hand, if the producer of this medicine had had received any requests to stop usage of the sign BETAFERON from the owner of the non-used trademark BETAFERON, it would have been the ground to file an action with court.

Under the new Law on Trademarks no one may claim that the registration of a mark should be revoked due to non-use, where, during the interval between expiry of the five-year period and the filing of the claim with the court for revocation, genuine use of the mark has been started or resumed.

This provision of the Law came from the court practise - in the FLORA case the 5 years non-usage period, counted from the registration of trademark in 1993 to filing of claim in 1999 was interrupted by the short usage period in 1996.

However when adopting a decision on the revocation of the registration, the following circumstances shall be disregarded:

Such provisions of the Law should make the owners of the trademarks more disciplined, because any complaints filed by the owner of the non-used trademark may be rejected and the owner of the new mark on the market would be protected if he will file the claim for revocation of the trademark, which wasn't used groundlessly.

On the other hand some questions, such like: sufficient quantity of goods or sufficient frequency of usage are left for the practice of the courts.

In the aforementioned FLORA case even two episodes of usage for edible essences marking were acknowledged sufficient to prove that the trademark has been used. However probably in the case against trademark registration for everyday products marking, two episodes of usage would not be sufficient.

The only one probationary batch of the goods also would not be sufficient to prove the usage of the trademark – it may be considered as intention to use the trademark only, the same as manufacture of packaging, requests for official permissions (if needed) and agreements with possible distributors. On the other hand the Law is the instrument, determining the main guidelines, but not the code of the rules, that regulate all and every aspects of the everyday life.