Bad Faith and Well-Known Marks
Well-known marks enjoyed protection under the previous national law however the law currently in force provides more efficient instruments for protection of such marks.
In accordance with the law currently in force, well-known marks – registered and unregistered – are protected in Lithuania against marks for similar and dissimilar goods. A mark may be found well-known in Lithuania as a result of extensive use and/or promotion only in a court proceeding (trademark invalidation or infringement case) – the national Patent Bureau is not competent to make decisions on whether the mark is well-known. The holder of a well-known mark may oppose on the grounds of its mark being well-known only if the mark has already been found well-known in a dispute considered in a court proceeding.
For the purpose of establishing whether a mark is well-known in Lithuania, the national court applies WIPO’s criteria. The law does not establish any percentage threshold (% of consumers knowing the mark) and a consumer survey showing the consumer’s awareness of a mark is not mandatory, though such a survey may have a strong impact on the finding of renown.
A specific bad faith provision did not exist in the previous trademark law. Such marks could be invalidated only in court proceedings based on provisions of Paris Convention, national Competition Law, Copyright law. Despite such deficiency of the previous law, Appeals Board on several occasions applied absolute grounds (deceptiveness and contrary to morality), though actually the Board was limited in applying these grounds and normally such cases could be resolved in court proceedings.
The new trademark law contains a specific bad faith provision which gives genuine trademark owners a better and more efficient tool to combat misappropriators not only in court but also in opposition proceedings. The number of bad faith cases considered by the Opposition Division and courts has become higher than ever; and the reason for such an increase does not lie in an increased number of bad faith applications but rather in availability of more efficient legal instruments. As a result, the quantity of new bad faith applications has noticeably decreased, which is evident to anybody who regularly scrolls through new marks.
The general principles applied for bad faith national marks are the some as those applied for CTMs. The Lithuanian Supreme court has also provided for the major criteria to be taken regard of in consideration of such cases. For example, the opponent or claimant for invalidation on this ground has to prove its subjective right for an identical or similar right (registrations in other countries). The burden of proof is laid upon the opposer (claimant), a rebuttable presumption is not applied in consideration of such cases. One of the main criteria is whether the applicant could not but know about the mark belonging to the claimant. On your request we will provide you with more detailed information on the cases considered in opposition and court proceedings.
The national law also contains a special provision against misappropriated agency marks as a relative ground for invalidation. The burden of proof in such cases also lies upon the claimant (in a court action) or the opposing party (in an opposition). However once the claimant has proved its rights for the mark in another country and the existence of agency relations, it is the defendant (holder of the opposed mark) who will have to justify his actions. In the absence of such justification the claimant will be the winning party. Such cases may be considered in opposition and court proceedings.