In Lithuania, before registration of a trademark, the State Patent Bureau carries out an expertise according only absolute requirements for the trademark, which are indicated in the Lithuanian law on Trademarks (Art.5 and 6). Because Lithuanian law on Trademarks is harmonized with the provisions of First Council Directive 89/104/EEC of December 21, 1988 regarding approximation the laws of the member States relating to trademarks, therefore absolute grounds for refusal in Lithuania are practically the same as in the European Community.
This article seeks to provide a survey of the practice of the State Patent Bureau regarding refusals to register trademarks according absolute grounds.
The Lithuanian State Patent Bureau held that following words and words combinations are not registrable:
- "BEST-HALL" for steel halls with coating of plastic (class 6) and building materials, light-weight halls in tent building style for industrial and sports use (class 19). By the State Patent Bureau this trademark was translated into Lithuanian as the "best hall" and it was stated that such a trademark performs information of praise character. Although this trademark was registered in Estonia, Hungary, Benelux.
- "NATURALDEO" for goods in class 3.
- "PaperSelect" for cigarettes in class 34.
- "INTEGRUOTOS KOMUNIKACIJOS" ("integrated communications") for the services in classes 35 and 38.
The State Patent Bureau in it's decisions stressed that the trademark is distinctive if it does not provide the consumer with any direct information about the goods and services marked by it. But in most of above mentioned cases, the State Patent Bureau does not take into account that if the trademark may only be associated with goods or services for which it is applied to register, it cannot be considered as having no distinctive character.
The State Patent Bureau held the following to be eligible for registration:
- "T.R.U.E TEST" for pharmaceutical preparation for the diagnosis and treatment of allergies and diagnostic tests for contact dermatitis (class 5). This registration was refused, because it was concluded that dots between letters do not provide for distinctive character.
- "Just in" for the clothing, footwear, headgear (class 25).
- "FAVORIT" for the pet food (31).
"PrintHouse" for the goods and services in classes 16 and 42. The State Patent Bureau refused to register this trademark, because it was stated that it is descriptive and that the capital letter in the middle of the word is not a sufficient feature providing the mark with distinctiveness which allow to separate one producer from another. But later this trademark was accepted, because it was proved that there is no such word in the English as "PrintHouse", therefore it's meaning can only be guessed. Due to the many meanings of the mark "PrintHouse", the goods and services marked by it can be related to the trademark just associatively, and that is not a sufficient background to recognize the trademark to be descriptive.
Trademark "anti-angin" was accepted as trademark for goods in class 5 by Appeal Section of the State Patent Bureau. It was stated that a wordy trademark "anti-angin" has the distinctive character, namely it is not composed exclusively of descriptive information and knowledge about the goods and their production.
"COLLECTION 2000" was also accepted as a trademark for goods in class 3 by the Section of Appeals. This trademark is composed of two elements: the English word and a numeral 2000. A word "collection" translated from the English language has several meanings: "gathering", "set", "collection", "crowd", "levy", etc. Thus a word "collection" having several various meanings does not give for the consumers the descriptive information or the knowledge about the concrete goods or their production. For goods in class 3 the word "collection" is not a customary description. The second numeral "2000" can also be conceived variously. It can be supposed that a numeral "2000" is more symbolic and is not directly related with the goods for which the trademark is registered.
Slogans are also refused by the State Patent Bureau very often motivating that they have no distinctive character.
Slogan "BE A TOUCH AHEAD" for goods and services in class 9 and 38 was refused by the State Patent Bureau, because it was stated that this slogan would be seen just as a publicity, without distinctive character. But it was proved to the State Patent Bureau that this trademark does not provide for the consumer any direct information about the goods and services marked by it, therefore it is not of the descriptive character. In this case the slogan BE A TOUCH AHEAD is not used in the Lithuanian language and it is not known for the majority of the public, therefore it has the distinctive character. This trademark just associatively can be related to the goods and services for which marking it has been filed.
The State Patent Bureau also regarded the following slogans as protectable: "CHIPS AHOY!" for the goods in class 30; "TAUPAI PINIGUS IR LAIKÀ - TAI KO TAU REIKIA" ("Saving money and time - that's what you need") for the services in classes 35, 36, 37, 38, 39, 40, 41, 42; "Imk!…ir dar kartà imk" ("Take!…And take once more!) for goods in class 30; "Ieðkok, kas tikra!" ("Look for that is true") for advertisement in class 35.
It can be mentioned that the Lithuanian State Patent Bureau, according to world-wide practice, should take into consideration two methods in determining whether a trademark is descriptive or not. According to the first one, the quantity of imagination needed for the consumer to relate the product to the trademark is taken into consideration. The more imagination is required the more explicit it is that the trademark is not the descriptive one. According to the second method, the consideration is taken as to whether the trademark is needed to the competitors in trying to describe their goods and services. If not then the trademark is not a descriptive one.
Trademarks also will be registered by the State Patent Bureau on the basis of acquired distinctiveness through the use of such a trademark.
The State Patent Bureau refused to register following trademarks, because they have become customary in the current language: "BRAÐKË" ("strawberry"), "VYÐNIA" ("cherry"), "GERVUOGË" ("blackberry") for goods in class 30. Though very similar trademarks, such as "Avietë" ("raspberry"), "Ananasas" ("pineapple"), "Bananas" ("banana") for goods in class 30 have been accepted.
The State Patent Bureau held the following to be eligible for registration:
- "RAPA" for goods in class 5. At first it was refused, because it was concluded that it is one of the abbreviations of the word "rapamycin", which is the trivial name of chemical combination, and that it may be the component or the main ingredient of the medicines and therefore can not be registered as the trademark.
- "ONE TOUCH" for goods in class 9. This trademark at first was also considered as non-registrable, because it was ascertained that it consists only of the words "one touch" which are commonly used in the descriptions of the appliances such as telephones and radiotelephones having the feature to carry out one touch dialing or having only one - the main button to perform many different task.
Words, indicating characteristics of goods or services
The State Patent Bureau refuses to register trademarks, which consist exclusively of signs, indicating characteristics of goods and/or services, e.g. the kind, quality, intended purpose of the goods.
"CALCI-MAX" for pharmaceutical preparations (class 5) was not registered, because according the opinion of the State Patent Bureau this trademark indicates the characteristics of goods. Experts have indicated that this trademark consists of abbreviations of Latin words "calcium" and "maximum". If two words have meanings and also their abbreviations, it is possible to conclude that the combination of them also has meaning, which is known for the society. In Lithuanian it means, "Calcium-the biggest quantity". It was concluded that this trademark is not artificial, because it indicates the substance and the quantity of the substance, which compose pharmaceutical preparation.
In this case it was not taken into account that a trademark may be refused on a base of discussed ground only if a trademark consists exclusively of signs, indicating characteristics of goods. Also it was not noticed that if different elements creates a new word combination, which has no clear meaning and can not be construed as an indication pointing to specific goods or services, it is eligible for registration as a trademark.
Trademark "EFFECTOR" for goods in class 5 was registered, because it was proved that this trademark does not mark the goods' characteristics for which it is filed to register. A word "effector" just associatively can be related to a word "effective, efficient". Direct meaning of a word "effector" is an "executive agency" and just a word ''effective" in the English means "effective".
The State Patent Bureau does not register trademarks consisting of standard, ordinary bottle, box, etc. or 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 three-dimensional trademark composed of hexagonal figure for the goods in class 30 was dismissed. The motive of the refusal was that this trdaemark consists of simple geometrical shape, i.e. six-cornered prism, and therefore has no distinctive character. The expert indicated that this trademark does not meet absolute requirement for trademarks, i.e. it does not individualize the producer, and that it indicates the characteristics of goods.
The applicant stated that this trademark does not define concrete products and that it is original and not used by other producers. It was also affirmed that in this case the mentioned trademark is filed for registration for goods in class 30, such as chocolate, confectionery, etc. which characteristics could be "dark bitter chocolate", "cheap sweets" and others, but in none way it is possible to guess from the original hexagonal formed figure about the characteristics of the goods and it is also impossible to guess for what goods marking the trademark is registered.
However, the State Patent Bureau did not accept this trademark. Even the registration of the hexagonal shape without indication as a CTM had not convinced the Lithuanian State Patent Bureau of the distinctiveness and registrability of said trademark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.