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FERRERO ROCHER v. ROSHEN
March 2, 2017
Ukrainian undertaking Dochirnie pidpryiemstvo "Kondyterska korporatsiia" Roshen" owns several international registrations with common verbal element „ROSHEN”, namely ROSHEN (word.), Nr. WO 741975, ROSHEN (fig.), Nr. WO 1020077, FINE CHOCOLATE ROSHEN SINCE 1996 Elegance (fig.), Nr. WO 1097449, FINE CHOCOLATE ROSHEN SINCE 1996 Åêñòðà÷îðíèé, reģ. Nr. WO 1103380), FINE CHOCOLATE ROSHEN SINCE 1996 Åêñòðàìîëî÷íèé, reģ. Nr. WO 1102759, which was subsequently designated to Latvia.
Well-known Italian undertaking FERRERO S.P.A. through intermediary of patent Attorneys of Agency TRIA ROBIT filed oppositions against above-mentioned international registrations. Oppositions were based on erlier international figurative trademark registration „FERRERO ROCHER” Nr. WO 799 546. Moreover, all oppositions were based on provisions of Article 7 part 1 paragraph 2 (the likelihood of confusion of trademarks) and Article 7 part 1 paragraph 2 (imitation of well-known trademark) of the Act «About Trademark and indications of geographical origin».
On 2 December 2016 the Board of Appeals of the Patent Office of the Republic of Latvia has heard the appeal. After the examination of the case materials, the Board of Appeals found that taking into consideration that phonetic and visual difference between compared marks, it is clear that they are not confusingly similar according to Article 7 part 1 paragraph 2 of the Act. However, when analyzing if there exist circumstances required by the Article 8, the Board of Appeal considered that case evidences are sufficient to consider trademark FERRERO ROCHER – both word trademark and figurative trademark – to be well-known trademark among Latvian consumers already before subsequent designation date of the contested international trademark registrations to Latvia in respect of chocolate goods that are considered to be identical and similar goods to the goods of class 30 of the contested trademarks. Moreover, the Board of Appeals found that dominating elements of compared marks "ROCHER" and "ROSHEN" are visually and phonetically similar. Their mutual similarity is strengthen by the fact that both word elements are not in Latvian language and Latvian consumers will perceive them as words having any semantic meaning, but major part of letters, syllables and sounds are similar in these words. Thus, the Board of Appeal agreed with the arguments of the applicant that the dominant element of the contested marks "ROSHEN" may be perceived as an imitation of well-known mark FERRERO ROCHER.
In accordance with above-mentioned, the Board of Appeals decided to satisfy oppositions filed by the Italian undertaking FERRERO S.P.A. aganced international trademarks registrations, namely ROSHEN (word), Nr. WO 741975, ROSHEN (fig.), Nr. WO 1020077, FINE CHOCOLATE ROSHEN SINCE 1996 Elegance (fig.), Nr. WO 1097449, FINE CHOCOLATE ROSHEN SINCE 1996 Åêñòðà÷îðíèé, reģ. Nr. WO 1103380), FINE CHOCOLATE ROSHEN SINCE 1996 Åêñòðàìîëî÷íèé, reģ. Nr. WO 1102759, owned by the Ukrainian undertaking Dochirnie pidpryiemstvo "Kondyterska korporatsiia" Roshen", and dismiss international trademark registrations protection in Latvia .
FERRERO S.P.A was successfully represented by Mr. Bronislavs Baltrumovics, Trademark Attorney & Senior Lawyer of Agency TRIA ROBIT.
Opposition against trademark CHAMPEZZO
March 1, 2017
Mrs. Inese Polaka, Trademark Attorney of Agency TRIA ROBIT, on behalf of French organization Comite Interprofessionnel du vin de Champagne filed on 22 April, 2014 the opposition against the trademark “CHAMPEZZO”, reg. nr. Ì 66 984, registered by the Lithuanian undertaking “ITALIANA LT”, UAB. The opposition was based on similarity of the challenged trademark CHAMPEZZO to the widely known geographical indication of origin Champagne.
On 28 August 2015 the Board of Appeals of the Patent Office of the Republic of Latvia has examined the opposition. Mr. Bronislavs Baltrumovics, Trademark Attorney & Senior Lawyer of Agency TRIA ROBIT participated in the hearings on behalf of Comite Interprofessionnel du vin de Champagne.
After the examination of the case materials, the Board of Appeals found that the geographical indication of origin Champagne is one of the most renowned indications of origin of food products and beverages in Europe and in Latvia. The vast majority of consumers associate the indication Champagne with sparkling wine which is produced in France, in the Champagne region and also with feasts, exclusiveness, luxury goods as well as high price. The Board of Appeals agreed with the claimant’s opinion that the coincidence of the first parts (champ-) of the comparable indications has a significant influence over the perception of contested indications. As it was established in trademark dispute resolution practice, consumers better remember first part of trademark, but they may take a pass on the difference between last parts of trademarks. So, it is most likely that consumers would associate the indication CHAMPEZZO with indication of origin Champagne. Therefore, according to the opinion of the Board of Appeals, taking into consideration the likeliness of first parts of the contested indications, vast majority of consumers might perceive the trademark CHAMPEZZO as an imitation or a parody of the protected geographical indication of origin Champagne. Further, the Board of Appeals considers that even if there is an indication of the real place of origin of the particular beverage and the consumer is not misled, the use of CHAMPEZZO trademark in respect of wine and sparkling wine, gives a trademark owner the possibility to attract an additional interest of consumers to the particular beverage that can be recognized as dishonest use of the reputation of the indication of origin Champagne. The use of the contested trademark can inflict harm to reputation and prestige of the indication of origin, if, for example, the quality of the beverage is not high.
In accordance with above-mentioned, the Board of Appeals decided to satisfy filed opposition and by decision of 15 July 2016 invalidated the registration of the trademark “CHAMPEZZO”, reg. nr. Ì 66 984. The decision was not appealed and entered into force.
Another victory in the Supreme Court
30 May 2016
On 25th May, 2016 the Department of Civil Cases of the Supreme Court has given the judgment in the case Nr. C04195412 (PAC-0060/2016) regarding the complaint brought by Dutch company GNT Group B.V. (GNT Beeher B.V. / GNT International B.V) against SIA “NutriFood Ingredients” on the termination of illegal use of trademark and transfer of rights for the domain name. The case reached the Supreme Court under appeal after it has been considered by the Collegium of Civil Cases of the Regional Court of Riga.
Namely, on 8 February 2012 the Dutch company GNT Beeher B.V. (the former name is GNT International BV) brought an action against SIA “NutriFood Ingredients” for termination of the illegal use of the Community (EU) trademark CTM 000698340 and transfer of rights for the domain name “nutrifood.eu”, obliging the defendant to change the name of the company and transfer the rights for the domain name to the applicant. The claim has been based on the fact that the part of defendant’s company name must be interpreted as confusingly similar to the Community (EU) trademark of the applicant, which is registered in relation to food additives. At the same time, the defendant is engaged in trade of food components (ingredients), and the respective domain name was registered and is being used in bad faith in order to gain commercial benefit from the trademark of the applicant, as well as from the recognition of products in the market produced by the applicant.
On 15th February, 2013 the collegium of the Regional Court of Riga with its judgment satisfied the action brought; however, the defendant has lodged the appeal against this decision. The Department of Civil Cases of the Supreme Court, having listened to the submissions of the case of the parties at the hearing and examining the evidence, acknowledged that the claim is groundless and should, therefore, be declined.
The Court of Appeal found that Community (EU) trademark of the applicant has been registered and is being used in relation to the concrete and specific food additives, which are not present in the offered product range of the defendant, as well as found no basis for believing that the trademark of the applicant would be recognized as a well-known in Latvia. The Court also indicated that the materials of the case do not determine that the defendant had use its company name in relation to goods, placing on the market exactly the same food additives, in respect of which the trademark of the applicant is registered, or similar food additives; and, referring to the case-law of the Court of Justice of the European Union, the court considered that the use of the company name without putting it on the specific goods cannot be considered to be use in respect of the goods of the Law on Trademarks and Indications of Geographical Origin, especially taking into account the relevant consumers (experts in food industry). As a result, the Department of Civil Cases has acknowledged that there is no reason to believe that the relevant consumers may be misled by the origin of the goods and perceive the company name of the defendant as a link between the defendant's goods and the applicant's trademark and its owner. Consequently, the essential function of the trade mark could not be adversely affected or jeopardized. In view of this, the court of appeal also concluded that there is no reason to believe that the contested domain name is registered in bad faith, and indicated that the applicant has not exercised his rights to obtain the corresponding domain name. The court also stated that under these circumstances the further bringing of the action does not demonstrate the honest use of the rights by the applicant.
When reviewing the judgment of the court of first instance, the Department of Civil Cases indicated that the court of first instance wrongly did not evaluated the scope legal protection of the applicant's trademark and failed to assess the evidence submitted by the parties in accordance with Section 97 of the Civil Procedure Law. Moreover, it violated the limits of the claim, resulting in making groundless conclusions about the existence of the trademark infringement.
The interests of the defendant SIA “NutriFood Ingredients” in this legal proceeding were successfully represented by Bronislavs Baltrumovics, a senior lawyer and a professional trademark attorney of Agency TRIA ROBIT in cooperation with Ruta Olmane, a professional Latvian and European trademark and design attorney from OLMANE LAW FIRM.
BRŪŽA vs. BRŪŽA LEĢENDA
10 February 2016
Riga City Vidzeme District Court by the judgment of 10 December 2015 has settled the dispute on trade marks BRŪŽA and BRŪŽA LEĢENDA between two biggest Latvian competing breweries, JSC ALDARIS and JSC CĒSU ALUS.
Namely, in February 2015 CĒSU ALUS filed a lawsuit against ALDARIS for invalidation of a trade mark registration and cease of trademark infringement. In fact, the dispute focused on the trademark BRŪŽA LEĢENDA (reg. No. M 68 498) registered and used by ALDARIS, which was challenged by CĒSU ALUS on the basis on their earlier trademark BRŪŽA (reg. No. M 68 403).
The applicant considered that the two marks are confusingly similar and there is a likelihood of confusion, noting that CĒSU ALUS as the owner of the earlier trademark is only who is entitled to use the designation BRŪŽA. Additionally, the applicant also considered that in view of considerable financial and marketing investments in creation, development and promotion of BRŪŽA brand, the defendant knowingly acted in bad faith when applying for the registration and use of the mark BRŪŽA LEĢENDA and such action, among others, must be regarded as unfair competition. Illegal use of the mark was based on the visual, aural and semantic similarity of the marks, identity of goods (beer), as well as on bad faith of ALDARIS when applying its mark on the ground that each merchant must ascertain whether the other operators do not already have applied for registration of identical or similar trademark. Of course, the defendant did not agree on similarity between the marks, pointing out the visual, phonetic and semantic differences, as well as categorically rejected the bad faith on the ground specified by the applicant by denying such obligation as not provided by the law.
To protect his lawful interests, ALDARIS filed a counterclaim against CĒSU ALUS for invalidation of the registration of the trademark BRŪŽA (reg. No. M 68 403), considering that this sign lacks distinctive character being a clearly descriptive term of general nature (the term “brūža” means a „brewery” in old-fashioned Latvian language), and, therefore, was registered a trademark contrary to the rules set by the Law on Trademarks. This view was based on, first, the fact that the word in question and its folds are widely used nowadays in beer industry both colloquially and in countless publications in the mass media and all customers and society as a whole clearly understands the meaning, which is directly related to beer (i.e., meaning a “brewery” in Latvian). In addition, ALDARIS held that CĒSU ALUS, being active member of a beer market for a long time, can not be unaware that acquiring of exclusive rights to the sign BRŪŽA would give unfair advantage in the sense of obtaining exclusive rights on the word being widely used in industry, and would be contrary to honest business practices and bona fide principle (exploitation of rights in good faith), thus showing exactly CĒSU ALUS has applied for his trademark in bad faith taking into account also subsequent court proceedings against ALDARIS, being a biggest local competitor in the market.
Riga City Vidzeme District Court, having examined the case, evaluating the evidence filed by the parties and having heard the argumentation of the representatives of both parties has decided to reject in full the claim filed by CĒSU ALUS and to satisfy the counterclaim filed by ALDARIS. The Court in its judgment, basing on the evidence submitted, agreed with ALDARIS view and concluded that the word "brūzis" and its fold “brūža” is widely used in modern society as a synonym for the designation “brewery”, and did not found any evidence supporting the point of view of CĒSU ALUS that this word is regarded as a vocabulary and obsolete (old-fashioned language) term and therefore having at least some degree of distinctiveness, recognizing that the term "brūža" does not allow to identificate an individual beer producers and cannot serve for the main purpose of a trademark. Thus, the Court has held that the trademark BRŪŽA, reg. No. M 68 403, should be is invalidated on the basis of the provisions of Articles 6(2), 6(3) and 6(4) of the Law on Trademarks.
Taking into account that the earlier mark, on which the action was based, was considered to be invalid, the Court dismissed the action brought for trade mark infringement as unfounded in view of lack of earlier rights.
ALDARIS was successfully represented in this dispute by Mr. Bronislavs Baltrumovics, Trademark Attorney & Senior Lawyer of Agency TRIA ROBIT.
HUGO / HUGO BOSS and HUGO Nails PROFESIONAL NAIL PRODUCTS
July 30, 2015
On 20th October 2011 ‘NAIL PROF’ Ltd. registered with the Patent Office of the Republic of Latvia the trademark HUGO Nails PROFESSIONAL NAIL PRODUCTS (fig.), reg. No. M 64 053 in respect of the goods and services of classes 3, 8, 9, 16, 35, 39, 40, 41 and 44. The trademark attorney of Agency TRIA ROBIT on behalf of the German company HUGO BOSS Trade Mark Management GmbH & Co. KG opposed the trademark on 20th January 2012. The opposition was based on a group of the trademarks HUGO/HUGO BOSS, registered in respect of the goods and services in classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 34, 35 and 42.
Having examined the opposition case on 19th December 2013 the Board of Appeal admitted that the dominant part ‘HUGO’ of the contested and opposing trademarks is identical, and considered that in the event of similarity of the correspondent goods and services, and taking into account the well-known status of the opposing trademarks in fashion industry, the consumers might confuse the marks or consider them as interrelated. Moreover, admitting the well-known status of the trademark group HUGO/HUGO BOSS the Latvian Patent Office considered that the contested trademark is detrimental to the distinctiveness and reputation of the opposing trademarks, the Board of Appeal has fully satisfied the submitted opposition.
Being dissatisfied with the decision of the Board of Appeal, on 20th March 2014 ‘NAIL PROF’ Ltd. filed an application with the District Administrative Court requesting to overrule the decision of the Board of Appeal. The application was justified by the fact that the Board of Appeal wrongly concluded that the mark ‘HUGO’ is well-known in Latvia and is associated only with the owner of the opposing trademarks, because in the opinion of ‘NAIL PROF’ Ltd. the consumers do not associate it only with HUGO BOSS. This opinion was supported by the fact that there are also other trademark registrations with the mark ‘HUGO’ in Latvia. Moreover, ‘NAIL PROF’ Ltd. pointed out that the Board of Appeal had made several procedural mistakes in the decision, namely, had not supported in accordance with the current legislation their statement that the majority of consumers associate the mark ‘HUGO’ with the German fashion house holder Hugo Ferdinand Boss. Furthermore, ‘NAIL PROF’ Ltd. believed that the Board of Appeal wrongly stated that the goods and services in classes 3 and 8, 39 and 16, 40 and 44 must be considered as similar or related goods/services, because in such a manner any goods and services should be recognised as similar or related. In addition, ‘NAIL PROF’ Ltd. asked for the compensation of the material damages that occurred as a result of the unlawful decision of the Board of Appeal.
Having examined the case on its merits, the District Administrative Court on 24th October 2014 made a decision to fully reject the application of ‘NAIL PROF’ Ltd. In its decision the District Administrative Court thoroughly analysed the argumentation indicated in the ‘NAIL PROF’ Ltd. application and disagreed with it. In its decision the District Administrative Court pointed out that according to the accepted practice of the European Court of Justice, the assessment of the confusing similarity is affected mainly by the dominant elements of the marks, which arise mutual associations and affect the impression of the consumers, namely, by emphasising that the both contested and opposing trademarks are visually, phonetically and conceptually identical. Nevertheless, evaluating the correctness of the interpretation of the Nice Classification, the District Administrative Court indicated that while comparing goods and services it is necessary to bear in mind the use and occurrence of the compared marks in one and the same business field. Further, evaluating the opponent’s request for material compensation, the court admitted that pursuant to the provisions of the Administrative Procedure Law of the Republic of Latvia, the preconditions set down by legislator concerning the compensation do not come into effect, as the court had found the administrative act as lawful.
‘NAIL PROF’ Ltd. tried to appeal the decision of the District Administrative Court with the Regional Court; however, due to the procedural deficiencies the Regional Court did not accept this appeal. Thus, the decision of the District Administrative Court has entered into force.
F1 vs. F1 FITNESS KLUBS FITNESS CLUB
20 May 2015
On 20th May 2009 ‘Mevi’ Ltd. has registered with the Patent Office of the Republic of Latvia a trademark F1 FITNESS KLUBS FITNESS CLUB (fig.), reg. No. 60 627 in respect of the services in classes 41, 43 and 44. That trademark was opposed on 20th August 2009 by the trademark attorney of Agency TRIA ROBIT on behalf of the Netherlands company Formula One Licensing B.V. The opposition was based on the group of the trademarks F1/Formula 1 registered in respect of the goods and services in classes 3, 41 and 43.
The Board of Appeal during the examination of the opposition held on 9th March 2012 has admitted that the compared trademarks are phonetically and visually similar. For this reason, the Board of Appeal considered that due to the similarity of the corresponding goods and services the consumers might think that the corresponding services come from the same or economically linked companies, consequently, deciding to satisfy the submitted opposition in full.
Being dissatisfied with the decision of the Board of Appeal, ‘Mevi’ Ltd. has filed an application with the District Administrative Court on 17th September 2012 asking to overrule the decision of the Board of Appeal. The application was justified with the fact that the Board of Appeal has made several significant procedural mistakes in the decision and as a result ‘Mevi’ Ltd. had no possibility to file their arguments, but the case was dealt neither partially nor objectively. Particularly, ‘Mevi’ Ltd. has pointed out in the application that the opponent has not submitted the document, which would demonstrate the fact that the power of attorney is signed by the person who is an authorised representative of the company, as well as the documents that would confirm the ownership of the Formula One Licensing B.V. on the disputable trademark. Moreover, according to “Mevi” Ltd., there were no any documents with the legal status in the case to be filed by the opponent, namely, the existing derivatives of the documents were filed without correctness certification, and all annexes were filed in foreign language without it translation into official language of the Republic of Latvia, thereby the applicants procedural rights were substantially restricted.
On 17th October 2013, after the examination of the case on its substance, the Administrative District Court entirely refused the application of ‘Mevi’ Ltd. The Administrative District Court in its decision once again has analysed the argumentation of the applicant and considered it as reasonable and therefore agreed with the opinion of the Board of Appeal concerning the similarity of the compared trademarks. Furthermore, the applicant was failed to send his representative to the hearing and has not informed the court about the circumstances of absence, therefore the court has not considered the new arguments submitted by the applicant.
‘Mevi’ Ltd. appealed the decision of the lower court with the Administrative Regional Court. The appeal was based upon the arguments that were mentioned in the primary application, pointing in addition that the court of the first instance wrongly decided that there is no dispute concerning ownership of the earlier trademarks to the opponent and expressed the view that the lower court exceeded its authority and competence, because made a conclusion concerning the visual similarity of the trademarks by itself. The applicant believes that the assessment of this aspect is within the science, art, sociology and psychology specialist’s competence and judge could not make any analysis of this respect.
However, the Administrative Regional Court by its judgment of 19th March 2015 entirely refused the appeal of ‘Mevi’ Ltd. The court agreed with the analysis of the circumstances of the case and their evaluation made both by the Board of Appeal and the Administrative District Court. Nonetheless, after assessment of the arguments mentioned in the appeal, the Regional Court has pointed out, that the applicant’s arguments concerning the opinion that only the specialist of certain areas (and not the judge) may provide the opinion concerning the trademark similarity, does not correspond to the established case-law of the European Court of Justice, namely, that the assessment of possible confusion is based upon the perception of the trade mark by the average customer, but not the specialist.
Besides, the Regional Administrative court re-assessed the power of attorney and existence of the opponent’s earlier rights and did not have any doubts about validity of the presented documents.
Opposition against Community trademark SLOW
20 May 2015
The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) delivered on 15 May 2015 the decision in the opposition proceedings brought by the Latvian company Golddust Company, SIA, successfully represented by Agency TRIA ROBIT, against the registration of the Community Trademark application No. 12 253 894 SLOW for the services of cl. 41.
The opposition was based on the earlier Latvian national trademark SLOW CAFÉ. After evaluating the submitted arguments OHIM has considered the signs and the services covered thereby to be similar enough to create a likelihood of confusion under Article 8(1)(b) CTMR and upheld the opposition for all the contested services.
The court granted the penalty for unauthorized use of a trademark
20 March 2015
Zemgale Regional Court on 11 March 2015 has delivered a final decision on the claim brought by Lithuanian company UAB ”Elbela” against Latvian company SIA “Unisat” concerning the enforcement of contractual penalty for an illegal use of a trademark.
The dispute between the companies arose in connection with agreement concluded back in 2011, according to which SIA “Unisat” undertook to respect the exclusive rights of UAB “Elbela” on the trademark OPENBOX. However, after one year since the agreement was concluded the plaintiff revealed that the defendant does not comply with the conditions of the agreement. Unfortunately, it was not possible to resolve the situation by negotiations and UAB “Elbela” brought the claim to the court.
On 5 November 2014 Aizkraukle City Court has decided to grant to the plaintiff the full amount of contractual penalty asked according to the agreement. However, the defendant appealed the decision of the first instance. A panel of judges of Zemgale Regional Court examined the case once again and dismissed the appeal, fully upholding the decision of court the first instance and granting the full amount of penalty to the claimant.
UAB “Elbela” was successfully represented in this litigation by Mr. Bronislavs Baltrumovics, Trademark Attorney and Senior Lawyer of Agency TRIA ROBIT.
Counterfeit HELLO KITTY watches
30 January 2015
The Agency TRIA ROBIT has successfully represented the interests of the company ‘Sanrio Company Ltd.’ in the administrative violation proceedings against the Latvian company ‘Timberlit’ LLC concerning the import of watches into the Republic of Latvia, which had an image confusingly similar to the Community trademark No. CTM 003000148 belonging to ‘Sanrio Company Ltd.’ and known as “Hello Kitty”.
In October 2013 ‘Timberlit’ LLC has applied a customs procedure, namely, release for free circulation the goods (watches). After a physical control of the goods by the customs office it was discovered that the goods involved are watches with image of a stylized kitten with a pink bow, which looked similar to the figurative trademark ‘HELLO KITTY’ belonging to ‘Sanrio Company Ltd’.
After examination the goods involved were considered to be counterfeit under provisions of the Article 2(1)(a)(i) of the Council Regulation (EC) No. 1393/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.
In this respect the customs officer has decided to invoke administrative responsibility to the importer (‘Timberlit’ LLC) pursuant to the Part 3 of the Section 20110 of the Latvian Administrative Violations Code (the application of the customs regime to counterfeit or pirated goods) by imposing a fine with the confiscation of the goods.
Timberlit LLC appealed the decision of the customs officer to the Director General of the State Revenue Service, which decided to uphold the decision. Dissatisfied with the decision of the State Revenue Service ‘Timberlit’ LLC appealed to the Daugavpils City Court, however, the court agreed with the opinion of the customs office and upheld the decision.
The ‘Timberlit’ LLC appealed the verdict of the first instance court. On 26th January 2015 after thorough analysis of the materials of the case and explanations submitted by parties, the Latgale Regional Court delivered the final decision in the proceedings and upheld the decision of the customs office finding it reasonable and lawful, consequently, invoking ‘Timberlit’ LLC to the administrative responsibility pursuant to Section 20110 of the Latvian Administrative Violations Code.
Ask.com è Ask.fm - Ask TRIA ROBIT!
05 November 2014
On 4th of November 2014 the Collegium of Civil Cases of the Riga Regional Court has terminated the litigation between US digital media corporation ‘IAC Search & Media, Inc.’ and Latvian IT-company ‘Ask.fm, SIA’. US corporation is the owner of such well-known Internet brands as ‘Vimeo’, ‘Dictionary.com’, ‘About.com’, ‘Ask.com’ and others, whereas Latvian company is a holder of the popular social network ‘ask.fm’. The dispute between these two companies arose due to the registration and use of the trademark ‘Ask.fm’.
The interests of ‘IAC Search & Media, Inc.’ in this litigation were successfully represented by Agency TRIA ROBIT in the person of the Latvian and European Trademark Attorney Mr. Bronislavs Baltrumovics, who has successfully obtained a preliminary injunction in favour of IAC. However, the legal proceeding resulted in an amicable agreement between the parties that lead to the sale of the Latvian company to the US corporation.
OHIM did not find LoC between ‘PELY Clean’ and ‘KLEEN’
08 October 2014
Attorneys of Agency TRIA ROBIT Mrs. Natalia Anohina and Mr. Bronislavs Baltrumovics secured a successful defense for the client - Latvian company SIA Polipaks in the cancellation action brought by Pely-plastic GmbH & Co. KG against the CTM 011138881 KLEEN.
Although OHIM’s Cancellation Division found that the goods in question are identical, the marks themselves were considered as different enough to exclude likelihood of confusion in the sense of Article 8(1)(b) CTMR. In particular, evaluating visual, aural and conceptual aspects of the compared marks, the Cancellation Division was sure that for the vast majority of the relevant consumers the dissimilarities between the signs will outweigh their similarities. Additionally, OHIM indicated that the word ‘clean’ for the relevant goods could be perceived to be of diminished distinctiveness comparing with the fanciful word ‘kleen’, which is distinctive for the goods in question and therefore the relevant consumers will be focusing on the word element ‘pely’. Consequently, OHIM concluded that there is no risk that the consumers will believe that the goods, even if they were identical, originate from the same undertaking and rejected the application for invalidity in its entirety.
This is a one of the good examples where local Latvian companies successfully obtain and secure their rights on Community trademarks with a professional help of qualified local trademark attorneys.
KĀRUMS successfully defended against GARUM
14 July 2014
French company COMPAGNIE GENERALE DE DIETETIQUE SAS basing on its earlier CTM GARUM registered for goods of cl. 5 and 29, has filed an opposition against the registration of the trademark KĀRUMS for the goods of cl. 29 and 30 belonging to SIA RĪGAS PIENSAIMNIEKS, which was represented by Agency TRIA ROBIT in the person of trademark attorney Bronislavs Baltrumovics.
The Board of Appeal of the Patent Office of the Republic of Latvia has examined the opposition on June 13, 2014 rejected in its entirety by the decision of July 14, 2014.
The Board of Appeal has found the goods of cl. 29 of the compared marks to be partially identical and partially similar, however, has concluded that the goods of cl. 30 of the contested trademark are not similar to the goods of cl. 29 of the earlier trademark.
Further, the Board of Appeal agreed to argumentation of the representative of the holder of the opposed mark that there are significant semantic differences between the trademarks, as the word “kārums” itself has a strong and clear meaning to each and every relevant consumer, but the earlier word mark “garum” has another, totally different meaning in Latvian language. Therefore such semantic differences overweight any similarities in this case and there does not exist risk of confusion. Additionally, due to earlier long-time, intensive and fair use of the contested trademark as a result of which the relevant consumers undoubtedly associate this trademark with its owner RĪGAS PIENSAIMNIEKS, SIA, likelihood of confusion is fully excluded.
TRIA ROBIT helps to obtain client’s competitor's trademark cancellation
6 June 2014
Trademark attorneys of Agency TRIA ROBIT Inese Polaka and Bronislavs Baltrumovics have helped the French company "Anasyor SA" to obtain cancellation of the trademarks NATURCOKSINUM and HOMEOCOKSINUM belonging to competitive merchant “Magnawand Traders Inc.” The judgement of 24 April 2014 of the Collegium of Civil Cases of the Riga Regional Court entered into force on May 14, 2014.
Both trademarks were cancelled under the provisions of the section 32 of the law "On Trademarks and Geographical Indications" due to non-use within 5 years since the date of registration. The court approved the earlier case-law and dismissed arguments of the defendant that opposition proceedings and administrative court proceedings should be considered as sufficiently justified reasons for non-use. The defendant’s arguments concerning lack of interest of the plaintiff because a court has earlier dismissed the action brought by the same plaintiff against registration of the trademark NATURCOKSINUM based on relative grounds were also dismissed.
Novartis claims victory over Sanofi-Aventis
September 19, 2012
Agency TRIA ROBIT was successful in defending a trademark of Novartis AG, a multinational pharmaceutical company, in Latvia against an opposition filed by another major player in a global pharmaceuticals industry, Sanofi-Aventis SA.Sanofi claimed that the opposed mark CIRASET was confusingly similar to its earlier trademark CIRARTE. TRIA ROBIT confronted and, among other things, noted that CIRARTE was a prescription drug and as such was supposed to be handled strictly by health professionals. This fact significantly reduced a likelihood of confusion on the part of the public.On 2 December 2011 the Board of Appeals of the Patent Office of the Republic of Latvia rejected the opposition as ungrounded.
Jägermeister’s reindeer enhances its reputation in Latvia
September 19, 2012
On 1 June 2012 the Board of Appeals of the Patent Office of the Republic of Latvia satisfied the opposition filed by TRIA ROBIT on behalf of Mast-Jägermeister SE against registration of MEDNIEKU trademark in the territory of Latvia. The Latvian company SIA “BELPIŠČEPROM” was hoping to register the mark, a figurative element of which also comprised the representation of a reindeer’s head, for vodka. Though the degree of similarity between two marks in question was not high enough to give a rise to a likelihood of confusion, it was nevertheless found to be sufficient to establish a link or association. As a result, considering that Jägermeister’s trademark was proved to be well-known among Latvian consumers and SIA “BELPIŠČEPROM” was taking unfair advantage of the highly distinctive element of Jägermeister – a representation of the reindeer’s head – MEDNIEKU trademark was invalidated in the territory of Latvia.
TRIA ROBIT secures victory for Raffaello in the Supreme Court of the Republic of Latvia
July 30, 2012
On 19 June 2012 the Chamber of Civil Cases of the Supreme Court of the Republic of Latvia delivered its judgment in the case concerning infringement of the Raffaello trade mark (a sweet consisting of an almond surrounded by a soft cream, wrapped in a coconut wafer shell and coated in coconut) owned by the Belgian company „Soremartec S.A.”. The dispute arose after Soremartec became aware that the company SIA „Rialat” was distributing in Latvia sweets, which appeared to be extremely similar to the world famous Raffaello sweets. SIA „Rialat” argued that nobody is entitled to prohibit others from producing and distributing white sweets coated in coconut. The Court however was not impressed and upon finding similarities between the appearances of the two products, decided the case in favor of Soremartec. In its appeal, SIA „Rialat” pleaded that registration of a trade mark is not appropriate way to protect shape of a candy and that such protection would be largely disproportionate. Recognizing that shapes may comprise distinctive signs and thus could be registered as trade marks, the Chamber of Civil Cases dismissed the appeal.
Baltic Trans (Viltransports) against the State Revenue Service/ adidas AG
June 01, 2012
The Regional Administrative Court with its decision of May 3, 2012 in case No. A42490505 upended more than a 5-year long dispute among the Latvian company SIA “Baltic Trans” (previously SIA “Viltransports”), the State Revenue Service of the Republic of Latvia and the German company “adidas AG” represented by Agency TRIA ROBIT. The case summary is as follows: in 2005 SIA “Viltransports” presented for transit procedure 15 960 pairs of footwear labeled by “Adidas” trademark (reg.No. M 16 691). Basing on the statement provided by the rights owner the State Revenue Service brought the company to administrative liability pursuant to violation of part three of Art. 201 10 of the Code of Administrative Violations of the Republic of Latvia, seizing the goods and imposing 1 000 LVL fine. Objecting this decision of the State Revenue Service, the company SIA “Viltransports” filed an appeal to the General Director of the State Revenue Service; however, on receipt of the refusal decision – proceeded with the administrative court. Meanwhile the German company “adidas AG” filed the claim with the Riga Regional Court against the company SIA “Viltransports” on the illegal use of the trademark. The Administrative District Court having considered the case pursuant to the application of SIA “Viltransports” cancelled the contested decision of the General Director of the State Revenue Service, but the appeals against this court decision were filed both by the State Revenue Service and the German company “adidas AG”. The Regional Administrative Court taking into account parallel case consideration by the civil procedure between the same parties postponed the administrative proceedings until the final decision in the civil case is made. In the frames of the civil case all court instances (Riga Regional court and the Chamber of Civil Cases of the Supreme Court) acknowledged the illegal use of the trademark owned by the German company “adidas AG” imposing the defendant - the company SIA “Baltic Trans” (“Viltransports”) - to destroy the infringing goods. The Senate of the Supreme Court having considered the cassation of the company SIA “Baltic Trans” (“Viltransports”) have not found any infringement and left the decision in force. The Regional Administrative Court, having considered the case during the appeal procedure, have cancelled the decision of the first instance court and left in force the initial decision of the State Revenue Service on imposing the administrative fine (1 000 LVL fine and seizure of the goods). The German company “adidas AG” proved the violation of their exclusive rights in all court instances and the initial decision of the State Revenue Service was lawful and grounded.
RAFFAELLO vs. RAFAEL (Latvia)
November 20, 2011 | Latvia
On 17 November 2011 the Regional Court of Riga adopted a decision in civil case between Belgian company “Soremartec S.A.” vs Latvian company “O’Lana” about infringement of the well-known trademarks RAFFAELLO using a name RAFAEL on cakes. The Agency TRIA ROBIT represented interests of the company “Soremartec S.A.” in this case. The Regional Court of Riga fully satisfied our claim and obliged that SIA „O.LANA” stop unlawful use of „Soremartec S.A.” trademark and prohibited SIA „O.LANA” to use the name “Rafael” in its commercial activities and compensate all requested court expenses including representative fee.
CELLO vs. CELLO (OHIM)
October 10, 2011
Honda Giken Kogyo Kabushiki Kaisha (Honda Motor Co. Ltd) (JP) vs LATNIK, SIA (LV)
The Regional Court of Riga
July 1, 2010
The client of Agency TRIA ROBIT - globally known company “Honda Giken Kogyo Kabushiki Kaisha” (Honda Motor Co. Ltd) - brought a claim against the local Latvian company “LATNIK, SIA” about the infringement of their Community trademark “TYPE R” (CTM 004864419). The company “LATNIK, SIA” imported in Latvia accessories for car, which were unlawfully marked with the trademark “TYPE R”, namely, bulbs - 46 units, flashing lights - 10 units and megaphones - 10 units. Preliminary injunction was requested and the goods were seized, until the case was reviewed on merits. The Regional Court of Riga satisfied the claim of the company Honda Motor Co. Ltd and decided to prohibit the company “LATNIK, SIA” to conduct any commercial activity with the goods and to impose them to destruct the infringing goods. The company “LATNIK, SIA” was also requested to compensate in favour of the Plaintiff all the court expenses. The Defendant did not appeal the decision and it came into legal force.
This case is remarkable for Latvia, as for the first time the Court obliged the infringer to completely compensate all court expenses, which were requested by the Plaintiff. Earlier, the Latvian courts considered that the amount of expenses (direct harm) are hard to estimate and therefore, this case was the first time when the Court admitted the amount of direct expenses to be compensated.
“Adidas AG” (DE) vs “BALTIC TRANS” (LV)
The Regional Court of Riga
May 5, 2010
The client of Agency TRIA ROBIT - company “Adidas AG” - brought a claim against the local company “BALTIC TRANS” about the infringement of the Latvian national trademark reg. No. M 16691 (sport shoes with three parallel stripes on the side in contrasting color) . The company “BALTIC TRANS” imported into Latvia 15 960 pairs of shoes marked with four parallel stripes on the side. The Regional Court of Riga satisfied the claim of the company “Adidas AG” and decided to adjudicate the company “BALTIC TRANS” to cease the unlawful use of the trademark and to destruct the detained goods. The court also adjudicated the Defendant, the company “BALTIC TRANS”, to compensate in favour of the Plaintiff , the company “Adidas AG”, a certain limited amount of the court expenses.
The Defendant appealed the decision of the first instance Court before the Supreme Court. The Supreme Court reviewed this case and decided to leave in force the decision of the Regional Court of Riga (the first instance Court decision). The decision has not come into force yet.
Philip Morris Products S.A. (CH) vs BALTIC ADVERTISING FACTORY (LV)
The Regional Court of Riga
November 30, 2010
The client of Agency TRIA ROBIT - globally known producer of tobacco goods “Philip Morris Products S.A.” brought a claim against the local Latvian company “BALTIC ADVERTISING FACTORY” about the unlawful use of their trademark MARLBORO. The Defendant was denoted as the local dealer of the mobile phones “Cicarette box 668” on the internet site www.specialphone.eu. The design of the offered online phones was very similar to that of the well-known MARLBORO cigarette box.
The Defendant neither replied nor attended the review of the case at the Regional Court of Riga. Finally, the company was invited through the Official Bulletin, but nevertheless nobody arrived at the court sitting. Therefore, the case was reviewed without the participation of the Defendant. The Regional Court of Riga satisfied the claim and decided to prohibit the Defendant to illegally use the well-known trademark MARLBORO and impose the infringer to destruct the mobile phones “Cicarette box 668”. The court also requested to compensate in favour of the Plaintiff some part of the court expenses.
FERRERO S.P.A. (IT) vs Latvijas Patentu Valde
Board of Appeals of the Patent Office of the Republic of Latvia
February 19, 2010
The provisional refusal of the Latvian Patent office in respect of the spacious trademark No. WO 405177 in the name of FERRERO S.P.A. in Class 30 was made basing on the fact that this trademark lacks distinctiveness. The provisional refusal was based on Art. 6.1.2 of the Latvian Law on Trademarks and Indications of Geographical Origin.
The response to the refusal was prepared and filed by Agency TRIA ROBIT with the Latvian Patent Office. The response to the refusal was based on the following reason: originality of the design. The product TIC TAC sold in such box (the design of which is identical to the one of the applied for registration spacious trademark), is known to the respective Latvian consumers already since 1994. Due to the big turnover of the product sales together with numerous promotional events, the design of the box acquired distinctiveness among the respective consumers. T