Extention to LT of International Marks

Application to WIPO

International marks filed by the system of Madrid Protocol can be extended to Lithuania. LT may be indicated as designation from the very beginning – then the validity of registration in Lithuania will be full-time – the same as of the International mark. LT may be included later as a subsequent designation. In the latter case the period of validity will be shorter than of the international mark – the time before the date of the subsequent designation will be missed.

The applicant does not have to nominate a representative or to notify the national trademark office about designation to LT – it will be done by the International Office.

Notification about designation of LT

This date is important – it is a starting date for the 18-month examination period. The 5-year grace period to start use begins after expiration of examination period. Consequently, in order to escape the risk of a non-use cancellation action (that may be brought by a third person) it is recommended to start use within six and a half years after notification about designation to LT.

Publication by WIPO

The publication date is the starting date of the 3-month opposition period.

Opposition by third person

FILING. Oppositions can be filed with the national office within three months after the publication in WIPO’s Gazette. The period for opposing cannot be extended for any reasons.

OBJECTIONS. The holder of the opposed mark is notified about the opposition and has to respond to the national office within 5 months after opposition filing. Normally during this period the holder of opposed mark nominates a local attorney who submits an objection to the opposition and participates in the hearing. Residents of the European Union are not required to appoint a local attorney, however since the proceedings are conducted in Lithuanian in most cases residents of EU also appoint a local attorney.

GROUNDS FOR OPPOSING. An opposition can be filed on absolute and relative grounds. Relative (“other grounds”) include:

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 the 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 name of a firm or possessing a misleading likelihood to the name of a firm, whose proprietor is another person who acquired the right to the name of the firm in the Republic of Lithuania before the date of filing of the application for the registration of the mark or the date of the priority, if on the specified date the firm 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.

Earlier trademarks include earlier marks filed under the national law, Madrid Protocol, CTMs and extended CTM’s (if national application was filed after May 1, 2004).

FEE. Before filing an opposition the opposer has to pay the official fee to the national office.

EVIDENCE. There is no need to submit evidence simultaneously with filing an opposition, such evidence may be submitted at any time before the hearing but not later than two weeks before the date of the hearing. The holder of the opposed mark may also submit such evidence and documents before the hearing.

CONSIDERATION. Oppositions are considered during oral hearings conducted by the State Patent Bureau Appeal Board normally consisting of three persons – the chairman and two examiners of the Bureau. The presence of the parties is not mandatory – they may limit their participation by submitting their argumentation in written, though in most cases the parties or their representatives attend the hearing. If the holder of the opposed mark does not submit any observations and does not attend the hearing, the hearing will nevertheless take place and a decision may even be made in favour of the non-attending party, though such an outcome has happened on rather rare occasions.

LANGUAGE. Argumentation, whether written or oral should be presented in Lithuanian. If evidence is in another language, it needs to be translated into Lithuanian.

PEACEFUL SETTLEMENT. Though the law does not specifically provide for a “cooling-off” period, actually it is the whole period from opposition filing to its hearing. If the parties do not manage to finish their negotiations before the hearing they can jointly request adjourning the hearing.

COSTS. Unlike CTM opposition proceedings, the Appeal Board does not decide on distribution of costs and each party bears its own opposition costs regardless of whether it was a success or not.

Examination against absolute requirements

Such examination is conducted by the national trademark office within 18 months from the notification date (or date of notification about subsequent designation).

Lithuanian examiners do not conduct ex-officio searching and examination against earlier rights.

As a result of ex-officio examination registration of a national mark may be refused on the following grounds:

the sign cannot constitute a mark (signed not registered as trademarks, e.g. smells;

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 authorised by the Government of the Republic of Lithuania;

it consists of signs the registration of which has not been authorised by the competent authorities of other states or international organisations 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. The above provision shall also be applicable against a geographical indication which, although literally true as to the place of origin of the goods, falsely represent to the public that the goods originate in another territory;

it contains or consists of a geographical indication identifying wines for wines or spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like.

Ex-officio examination is conducted only with regard to the contents of the mark and not with regard to he applicant’s behavior.

Observations of third persons either in connection with absolute or relative grounds are not accepted – third persons can object on absolute grounds only in opposition proceedings.

Examiner’s refusal

In case the examiner finds that the sign does not meet the absolute requirements, there will be sent a relevant notification to the applicant where the examiner will indicate the grounds and reasons for refusal. The applicant (or his representative) will have to respond to the national office within 5 months by filing a motivated objection (in the Lithuanian language). Otherwise protection in Lithuania will be refused.

Re-examination

Re-examination is conducted with regard to the motivated objection submitted by the applicant. As a result of re-examination the mark may be allowed for protection in LT or refused. In case of refusal the holder will be notified accordingly and will reserve the right to submit an appeal against the examiner’s decision to the Lithuanian State Patent Bureau.

Re-examination is not charged with an additional official fee.

Appealing

The holder of the refused mark may file an appeal against the examiner’s decision. The appeal will be considered by the Appeal Board of the Lithuanian State Patent Bureau. Normally such appeals are considered during oral hearings, though the holder may to choose just to submit written argumentation and not attend the hearing.

Filing an appeal is charged with a relevant official fee to be paid to the national office.

If the Board upholds the examiner’s decision, the mark becomes finally refused protection in LT, though the applicant will reserve the right to apply to the court. If the Board allows the appeal, the examiner’s decision will be reversed and the mark will be allowed for protection.

Refusal of grant of protection in LT

Refusal of protection may result from:

refusal on absolute grounds as a result of ex-officio examination (re-examination, consideration of an appeal) either if the holder fails to respond to refusal or does not manage to convince the national office in registrability of the mark or as a result of an opposition brought by a third person on absolute grounds;
refusal on relative grounds resulting from an opposition filed by a third person.

In case of final refusal by the national office the holder will reserve the right to apply to the court seeking reversal of the decision of the State Patent Bureau Appeal Board.

The opposition period is 3 months from publication date, period for examination against absolute requirements – 18 months after notification about registration (or subsequent designation to LT).

Grant of protection in LT

The mark has covered a long distance in time terms – at least 18 months after indication of LT as a designation and even longer if it encountered some obstacles.

Now that all the obstacles have been escaped or overcome the owner of the extended international registration has obtained full rights for the mark. The holder can initiate infringement court actions, grant licenses, etc., which he could not do while the mark was pending and did not mature to final registration.

Naturally, the holder has to remember about the necessity to continue watching against registration and use of similar or identical marks (national, Madrid Protocol CTMs), or against use that may the mark generic, etc.

The holder of an international mark extended to LT should bear in mind the 5-year grace period for use, which starts after the 18-month examination period.

Renewal of international registration is obtained through the International office.

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