News

Recent successes

• HONDA MOTOR CO., LTD (JP) vs Murashov Andriy Yuriyovych (UA)
  Case No.2-1771/08, Kiev District Court, Kiev Court of Appeal (September 2008)
  Agency TRIA ROBIT representing the client - the Claimant, HONDA MOTOR CO., LTD (JP) - has filed an application with Kiev District Court on earlier termination of legal protection of the UA national trademark PILOT registered for goods in Class 12 owned by Mr Murashov Andriy Yuriyovych (natural person) on the basis of its non-use within the 3-years period. The filed application was granted but further appealed by the Defendant before the Kiev Court of Appeal. The appeal was not granted and the decision of the Kiev District Court on earlier termination of legal protection of the UA national trademark PILOT was upheld. By cancelling the national trademark PILOT, HONDA MOTOR CO., LTD (JP) due to the assistance of Agency TRIA ROBIT obtained a possibility to register the filed trademark application for a designation PILOT used for HONDA automobiles.
   
• ORION CORPORATION (KR) vs SOCIETE DES PRODUITS NESTLE S.A. (CH)
  Kiev District Court (September 2008)
  Agency TRIA ROBIT representing the client - the Claimant, ORION CORPORATION (KR) - has filed applications with Kiev District Court on earlier termination of legal protection of the International trademark registrations ORION registered in the name of SOCIETE DES PRODUITS NESTLE S.A. (CH) for goods in Class 30 in the territory of Ukraine on the basis of their non-use within a 3-year period in Ukraine. The filed applications were granted and legal protection of the International trademarks in the territory of Ukraine was terminated. By cancelling validity of extension of the international trademarks in the territory of Ukraine, our client ORION CORPORATION (KR) obtained a possibility to get the filed trademark applications for designations O’ORION and O!ORION registered.
   
• Soremartec S.A./Ferrero Group (IT) vs IK "NES", SIA "ROSI", SIA "ILVA PLUS", SIA "VERON" (LV)
  Cases No. JUNO/08/BB/010, Nr. JUNO/08/BB/011, JUNO/08/BB/012 and JUNO/08/RO/007 (April – November 2008)
  Agency TRIA ROBIT represented the interests of the right-holders in a number of cases against several local companies that distributed confectioneries, which are confusingly similar in appearance, and packaging thereof with the earlier registered in Latvia international trademarks No. WO 715752, No. WO 729178 as well as No. WO 783985 of Soremartec S.A./Ferrero Group. All the local companies received Warning Letters on infringement of the intellectual rights of Soremartec S.A./Ferrero Group. Some of the companies (e.g. IK "NES" and SIA "ROSI") have ceased marketing of the infringing goods after short negotiations; however, the others (e.g. SIA "ILVA PLUS", SIA "VERON") haven't, and relevant actions were filed with the Riga Regional Court pursuant to the Law on Trademarks and Indications of geographical Origin of the Republic of Latvia (infringement of trademarks) and the Competition Law (bad faith).
  
  The two cases (against SIA "VERON" and SIA "ILVA PLUS") are still pending and with SIA "ILVA PLUS" a settlement agreement is concluded. The Court has satisfied the claim of Soremartec S.A. for preliminary injunction in both cases, issuing a decision to seize and prohibit marketing of the goods that seem to infringe the rights of the registered owner until the proceedings are finished.
   
• Travian Games GmbH (DE) vs SIA VERSUS Pro (LV)
  Case No. JUNO/07/BB/080 (November 2007 – November 2008)
  Agency TRIA ROBIT on behalf of the German company “Travian Games GmbH” turned to the Riga Regional Court with a claim against the local company SIA "Versus Pro" in connection with infringement of their rights pursuant to he Law on Trademarks and Indications of Geographical Origin of the Republic of Latvia. The German company enjoys rights to the well-known online strategy game “Travians” as well as they are the owner of the CTM No.005034871. Nevertheless, the company SIA "Versus Pro" has registered the Internet domain “travian.lv” in their own name without any permit on the side of the registered owner of the trademark. The company SIA "Versus Pro" refused to voluntarily reregister their domain in the name of Travian Games GmbH as requested basing on their intellectual property rights and as a result a dispute arose. The case is still pending but SIA "Versus Pro" has suggested to conclude a settlement agreement and to satisfy the requirements of Travian Games GmbH.
   
• RED BULL GmbH (DE) vs SIA Avers Centrs, SIA Labdruka (LV)
  Cases No. JUNO/08/BB/040 and No. JUNO/08/BB/055 (August – October 2008)
  The competitor of RED BULL GmbH the company SIA Avers Centrs – the manufacturer and distributor of the energy drinks XTC in Latvia have placed on their cars ads with the slogan "tev nav vajadzīgi spārni, ja tev ir rakete" ("You don’t need wings if you have a rocket"). Red Bull GmbH supposed that such a slogan is a direct hint to their products (in Latvia Red Bull uses in their ads the slogan "red bull ceļ spāāārnos" – "Gives You Wings"). Besides, Red Bull GmbH own the national trademark SNIEDZ TEV SPĀĀĀRNUS; ("Gives You Wings"), Reg.No. M 55 956 in Latvia. Agency TRIA ROBIT issued Warning Letters to both companies on behalf of RED BULL GmbH, basing on the conditions of the Law on Trademarks and Indications of Geographical Origin of the Republic of Latvia as well as the Competition Law and Advertising Law. On receipt of the letter SIA Avers Centrs have changed their ads in order not to infringe the rights of Red Bull GmbH. In the second case the company SIA Labdruka have offered on their Internet page the design of T-shirts imitating the figurative mark of Red Bull, namely, CTM No. 003350501, changing it so that in the view of Red Bull GmbH it was detrimental to the reputation of the company and the prestige of their trademark. A Warning Letter has been prepared and sent by Agency TRIA ROBIT to the infringer and the amicable agreement were reached; however, the subject design has been deleted from the list.
   
• Sara Lee/DE N.V. (NL) vs Massimiliano Fiocchetto (IT)
  Case No. ApP/2008/M 55648-Ie, Board of Appeals of the Patent Office of Latvia (May 9, 2008)
  Agency TRIA ROBIT filed an opposition against figurative trademark TAZZA D’ORO (reg.No. M 55 648) owned by Massimiliano Fiocchetto registered for the goods of Class 30 on the basis of the trademark PIAZZA D’ORO (reg.No. WO 586 134) of the Dutch company Sara Lee/DE N.V. registered in respect of goods of Classes 5, 29 and 30. The opposition was based on Art.7.1.2. of the Law on Trademarks and Indications of Geographical Origin of the Republic of Latvia, namely, earlier registration, similarity of trademarks and goods covered thereby. The opposition of Agency TRIA ROBIT acting on behalf of their client Sara Lee/DE N.V. was considered before the Board of Appeals of the Latvian Patent Office on May 9, 2008 and satisfied in full. The trademark TAZZA D’ORO (reg.No. M 55 648) was invalidated in Latvia.
   
• Apple Computer, Inc (US) vs SIA "Vieglās valodas aģentūra" (LV)
  Board of Appeals of the Patent Office of Latvia, (August 7, 2008)
  Agency TRIA ROBIT filed an opposition against the figurative trademark "izdevums vieglajā valodā", Reg.No. M 57 314 owned by the Latvian company SIA "Vieglās valodas aģentūra" registered in respect of goods/services of Classes 16, 41 and 42, basing on Apple Computer, Inc. figurative trademark APPLE, registered for the goods/services of Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 38, 41, 42, 43, 44 un 45. The opposition was based on Art.7.1.2 and Art.8 of the Law on Trademarks and Indications of Geographical Origin of the Republic of Latvia, namely, earlier registration, similarity of trademarks and goods covered thereby as well as on the status of well-known figurative trademark APPLE in Latvia. As a result of the mentioned opposition filed by Agency TRIA ROBIT on behalf of Apple Computer, Inc. a settlement agreement was reached between the owners of the trademarks, namely, the goods/services in connection with computer software and hardware were deleted from the list of goods of Classes 16, 41 and 42 of the figurative trademark "izdevums vieglajā valodā", Reg.No. M 57 314. Basing on the changes made, the mentioned opposition was withdrawn from the Board of Appeals on August 7, 2008.
   
• Volkswagen Aktiengesellschaft (DE) vs Volksauto, SIA (LV)
  Case No. ApP/2008/M 55 122-Ie, Board of Appeals of the Patent Office of Latvia (February 22, 2008)
  Agency TRIA ROBIT filed an opposition against the trademark VOLKSAUTO (reg.No. M 55 122) owned by the Latvian company Volksauto, SIA in respect of the services of Class 37 basing on the group of trademarks VOLKSWAGEN in the name of the German company Volkswagen Aktiengesellschaft in respect of the goods/services of Classes 12, 35, 36, 37, 39, 41 and 42. The opposition was filed basing on Art.7.2, Art.8.1 and Art.6.2 of the “Law on Trademarks and Indications of Geographical Origin” of the Republic of Latvia, namely, earlier registration, similarity of trademarks, similarity of goods/services covered thereby as well as the status of well-known trademark VOLKSWAGEN in Latvia and registration of the trademarks VOLKSAUTO in bad faith. The opposite party filed a response emphasizing that the trademark VOLKSAUTO was registered in Latvia with a purpose to favor the interests of their business activities, i.e. to delay coming into the Latvian market of the foreign companies that use the identical trademark VOLKSAUTO and not with a purpose to confuse the customers as to the connection of the trademark with the honorable company VOLKSWAGEN AG. Moreover, the trademark VOLKSAUTO and VOLKSWAGEN are different.
  The opposition filed by Agency TRIA ROBIT on behalf of Volkswagen Aktiengesellschaft was considered before the Board of Appeals of the Patent Office and satisfied in full. The trademark VOLKSAUTO (reg.No. M 55 122) was invalidated in Latvia.
   
• GRUNENTHAL GmbH (DE) vs GLAXO GROUP LIMITED (GB)
  Case No. ApP/2008/M 56 149-Ie, Board of Appeals of the Patent Office of Latvia (October 10, 2008)
  An opposition was filed against the trademark AKTIVIT (reg. No. M 56 149) of the client of Agency TRIA ROBIT - the company GLAXO GROUP LIMITED registered in Class 5 on the basis of the trademark ACLAVIT owned by the German company Grunenthal GmbH (reg. No. CTM 002860203) registered in respect of the goods of Class 5. The opposition was based on Art. 7.1.2 of the “Law on Trademarks and Indications of Geographical Origin” of the Republic of Latvia, namely, the earlier registration, similarity of trademarks and goods covered thereby. The opposition was considered before the Boards of Appeals of the Patent Office on October 10, 2008 and rejected in full as baseless. It is judged that the trademarks ALAVIT and AKTIVIT are not confusingly similar. The trademark AKTIVIT (reg. No. M 56 149) owned by TRIA ROBIT’s client - GLAXO GROUP LIMITED - is valid in Latvia.
   
• Canon Kabushiki Kaisha vs CANON Services LLC
  It has come to the attention of the company Canon Kabushiki Kaisha (JP), the owner of the numerous CANON trademarks, that there exists the domain name www.canonserviss.lv registered in the name of the Latvian company. A Cease and Desist Letter was sent to the infringing Latvian company with a request to cease using the registered marks of Canon Kabushiki Kaisha in their domain name and business name. As a result of the conducted negotiations the dispute has been settled in amicable way and the infringer CANON Services LLC agreed to change their business name to a completely different one and to stop using the domain name www.canonserviss.lv having changed it to another one, which is not similar to the trademark CANON.
   
• Globus Konzervipari RT vs Globuss grupa, SIA
  A claim against the trademark “GLOBUSS konditoreja, bistro, kulinarija” (fig.) of the Latvian company Globuss grupa, SIA registered in Classes 29, 30, 31, 32, 37, 39 and 43 based on the known Hungarian brand “GLOBUS” (fig.) in the name of Globus Konzervipari RT registered in Classes 5, 29, 30, 31 and 32. The claim was filed on the grounds of earlier registration, similarity of the trademarks and the goods. As a result of negotiations the case was settled in amicable way. The Latvian company agreed to delete all the goods of Classes 29, 31 and 32, to limit the goods of Class 30, namely, leaving “bread, pastry and confectionery, edible ices” only and leaving in full force Classes 37, 39 and 43. Speaking about the association, which comes to the Latvian consumers’ mind on hearing the word GLOBUS, the Hungarian brand GLOBUS of Globus Konzervipari RT is mentioned. This brand was well-known in the Soviet Union and it is proved that since the collapse thereof, GLOBUS is still enjoying the status of a well-known mark in Latvia.
   
• Medana Pharma Terpol Group S.A.
  Successful registration of the trademarks “MEDANA” (word and device) in the name of Medana Pharma Terpol Group S.A. overcoming the opposed registered trademarks “МЕДОНА” and “МЕДAНА - ХХI ВЕК”. The citation of the mark “МЕДОНА” was overcome on the grounds that despite the same conflicting Class 5 the way of using the trademarks is totally different. The trademark “MEDANA” as a trade name is used on documents connected with marketing of goods (business letters, invoices, price lists, catalogues, etc.); however, it is not used to mark the goods as such. The name “MEDANA” is present on the packaging as the name of the manufacturer Medana Pharma Terpol Group S.A. and not as a name of the medical product of this manufacturer. The manufacturer does not have any medical product called “MEDANA” which is sold on the Russian market. As well no conflict between the companies will arise, as the business activities thereof are different and the two markings are used in different forms. The citation of the other mark “МЕДAНА - ХХI ВЕК“ was overcome on the following grounds. The owner of the cited mark - Center “МЕДAНА ХХI ВЕК” is an institution that offers medical services to patients using various medicines in their activities. The company Medana Pharma Terpol Group S.A., the owner of the trademark “MEDANA” is a manufacturer of various medicines and pharmaceutical preparations and it uses MEDANA only as its trade name. As a result the mark “MEDANA” was successfully registered in the Russian Federation on 27 November 2007.
   
• Cathay Pacific Airways Limited
  Successful registration of the trademark “CATHAY PACIFIC THE CLUB Marco Polo” in the name of Cathay Pacific Airways Limited in respect of Class 35. The lengthy and complicated registration proceedings initiated in 2005, which involved cancellation of the cited registered trademarks, obtaining a letter of consent from the owner of the other cited trademark as well as the limitation of the goods and services covered by the applied trademark “CATHAY PACIFIC THE CLUB Marco Polo” led to registration thereof on 3 December 2007.