National registration procedure

Filing an application

General remarks:

a request for registration and all other documents should be submitted in the Lithuanian language;
multi-class applications (including goods and services) are allowed;
applications for 3-D marks are allowed;
applications for sounds, smells, taste are not allowed;
claiming Convention priority is allowed;
where a national application is filed for a broader list of goods than the priority application there may be filed an application with priority for a part of goods or services;
proof of use or intention of use is not required;
letters of consent or agreements with holders of earlier trademarks are not filed;
series applications, split applications and division of an application (like that recently allowed under the CTM system) are not allowed under the national law.
certification marks are applied for, registered and protected as collective marks;
goods and services should be listed in accordance with the Nice Classification (45 classes).;
disclamation of unprotected elements may be indicated in the application, or such a disclamation may be made on the examiner’s demand.

The filing documents include:

a request for the registration;
a document certifying payment of the official fee;
power of attorney (if the application is filed by the applicant’s representative);
a request to be granted priority (where appropriate);
a permit issued by competent authorities if the applied mark contains national symbols, names, flags, medals, etc. as well as signs that are to be refused or invalidated pursuant to Article 6ter of the Paris Convention;
regulations governing the use of a collective mark (in case of a collective mark);
consent of the owner of the rights for literary, scientific or artistic work protected under the copyright, the name or surname or artistic pseudonym of a famous person, etc.

Power of Attorney and a document in proof of Convention priority together with its Lithuanian translation may be presented together with he application or within three months after filing as “late filing of documents”. Late filing is not charged by an official fee.

Filing or priority dates have the following effect:

Filing date (or where applicable – priority date) is the date from which its holder acquires rights in the mark. If another mark is filed later but for some reasons becomes registered earlier than yours, it is your mark that will provide earlier rights against the other mark. If your mark, filed earlier, is still pending it nevertheless enjoys provisional protection and can be used in the grounds of an opposition against registration of a mark filed later.

Filing date is the date from which the 10-year registration validity period starts. Convention priority date is not taken regard of in calculation of the period of registration validity. THUS, RENEWAL OF REGISTRATION SHOULD BE OBTAINED WITHIN THE TENTH YEAR FROM THE FILING DATE.

Filing date has no influence on calculation of the grace period to start use – this period is calculated from the date of grant of registration certificate.

Formal examination of application

The examiner will check the documents against formal requirements – whether all the necessary documents have been submitted, whether the application was filed correctly, whether the filing fee has been paid up, whether the list of goods and services is worded in accordance with the Nice Classification and the Lithuanian language norms. In case of deficiencies the examiner will send a notification and indicate the deficiencies.

Remedying of deficiency

The applicant is required to submit the lacking documents, correct the mistakes, amend the wording of the list of goods.

Application rejected

If the applicant does not observe the deadline for remedying deficiencies the application will be rejected (considered “to have not been filed”). The applicant is allowed to request extension of the period for responding.

Examination of the mark against absolute requirements

Ex-officio searching and examination against earlier rights in not conducted by examiners.

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.

The 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 will later be allowed to oppose).

As a result of examination the examiner will notify the applicant either about a positive decision and necessity to pay registration and publication fee or about refusal to grant registration.

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 will have to respond within 3 months by submitting argumentation in support of the mark, evidence in proof of acquired distinctiveness (which may help to overcome the refusal on the grounds of lack of distinctiveness, the mark being a commonly used sign or descriptive), disclaim some elements, etc..

In case of failure to submit a motivated response the application will be rejected (considered as having not been filed).

Re-examination

Re-examination is conducted on the applicant’s request with regard to the motivated objection submitted by the applicant. Re-examination is not charged with an additional official fee.

As a result of re-examination the mark may be allowed for registration or refused. In both cases the examiner will notify the applicant accordingly. In case of refusal the applicant reserves the right to lodge an appeal with the State Patent Bureau. If an appeal is not lodged within 3 months registration is finally refused.

Appeal against refusal

The appeal will be considered by the Appeal Board of the State Patent Bureau. Normally such appeals are considered during oral hearings, though the applicant is allowed just to submit written argumentation without attending the hearing.

Filing an appeal is charged with a relevant official fee.

If the Board upholds the examiner’s decision, the application becomes finally rejected, 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 proceed to registration.

Registration and publication

If after examination the mark has been allowed for registration, the applicant will have to pay the official registration and publication fee within three months after the date of the decision allowing registration. Within 1-2 months after submitting documents in proof of such payment the mark will be published in the Official Journal of the State Patent Bureau for third persons to oppose.

The date of registration is just a procedural and it does not have any significance for calculating the period of validity (validity is calculated from filing date) or the grace period to start use (the grace period is calculated from the date of grant of registration certificate).

Opposition by third person

FILING. Oppositions can be filed within three months after the official publication in the State Patent Bureau’s Journal. The period for opposing cannot be extended for any reasons.

GROUNDS FOR OPPOSING. An opposition can be filed on absolute (see absolute grounds above) and relative grounds:

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.

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.

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 its adjourning.

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.

Invalidation of registration

If the Appeal Board upholds the opposition the registration of the mark in dispute is invalidated. The holder of the invalidated mark reserves the right to apply to the court requesting that the opposition decision be cancelled – within six months. If the looser in the opposition is the opposing party it also reserves the right for appealing before the court.

Grant of National Registration Certificate

The mark has covered a long distance in time terms – at least 1.5-2 years from application filing date and even longer if it encountered some obstacles.

Now that all the obstacles have been escaped or overcome the applicant will receive the Registration certificate and thus obtain 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, or against use that may the mark generic, etc. The owner should always remember that ex-officio examination of new marks against earlier rights is not conducted – the Lithuanian examiner will allow registration even of an identical mark for identical goods.

The holder of registration certificate should also bear in mind the 5-year grace period for use, which starts on the Certificate grant date in order to escape the risk of a non-use cancellation action.

The holder should not be mistaken about the registration validity date – registration validity period does not start on the date of grant of certificate, it is going on and a part of this period has already passed– it started on the very first day of the long way – on the date when the application was filed. In some years it will be necessary to take care of renewal of registration. Happily, renewal is just a matter of payment of the official fee and observation of deadlines for fulfilling formalities.

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