Settlement of disputes involving national and Madrid Protocol marks is regulated by the national law. According to the national law, a conflicting national or International mark may be refused, invalidated or cancelled. Below we are giving some major comments on terms used the national law:
- Refusal to grant registration or protection may be a result of the ex-officio examination against absolute requirements. Ex-offico examination is not conducted against earlier rights. Examiners of the national trademark office will check a mark against the criteria of distinctiveness, descriptiveness, whether the contents of the mark conveys misleading or immoral information, etc.. Observations of third parties are not accepted at this step (third parties are allowed to demand invalidation in opposition proceeding). In case of refusal the applicant is notified accordingly and is allowed to submit observations. If observations are not submitted the application will be considered to have not been filed, If observations are submitted there follows re-examination of the mark. If after re-examination the initial decision about refusal is not reversed the applicant can file an appeal that will be considered by the Appeal Department of the trademark office (State Patent Bureau). If the appeal is not allowed, the applicant reserves the right to apply to court.
- Invalidation. A mark may be invalidated on absolute and/or relative grounds in proceedings initiated by third persons – either in opposition proceedings considered by the national trademark office or after grabt of registration certificate in court proceedings. A third person cannot demand invalidation of a similar mark if it has knowingly tolerated use of the later mark during the period of 5 years. An exclusion from this rule are bad faith marks, which can be invalidated at any time. If the opposition or claim is upheld, the mark becomes invalid from the date of its filing (or where applicable – from priority date).
- Revocation (cancellation) may be a result of a court decision in a proceeding initiated by a third person and may be based either on the grounds of non-use or because the mark has become generic. Unlike OHIM, the Lithuanian State Patent Bureau is not competent to consider cancellation cases. The validity of a mark is cancelled from the date of a relevant court decision.
Appeals (against examiner’s refusal to allow registration – absolute grounds) and oppositions (absolute and relative grounds) are considered during oral hearings conducted by the Appeal Department of the State Patent Bureau. The Board consists of three persons – the chairman and two examiners of the Bureau. The presence of the parties is not mandatory – they may decide not to attend the hearing at all, or limit their participation to submitting argumentation in written. Most often both parties attend hearings and produce their argumentation. If the holder of the opposed mark does not respond to the opposition and does not attend the hearing, the case will nevertheless be considered and a decision may even be made in favour of the non-attending party, though such an outcome is rather rare. Argumentation – whether written or oral – should be presented in the Lithuanian language. There is no need to submit additional evidence and materials simultaneously with filing an opposition, such materials may be submitted at any time before the hearing but not later than two weeks before the date of the hearing. Translation of all submitted documents into Lithuanian is obligatory. 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 have started negotiation and do not manage to settle the dispute before the hearing they can jointly request adjourning the hearing.
Unlike CTM opposition proceedings, the Lithuanian 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.
Infringement actions are subject exclusively to court consideration. The court system includes the court of first instance (Vilnius District Court) the decision of which may be appealed in the Appeals Court. The Appeals court may either uphold the decision of the first instance court or send the case back for re-consideration in the first instance court. The highest court is the Supreme Court of Lithuania.