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Dear clients and cooperation partners,
As most of you are likely counting days to Christmas, New Year, and may be a nice winter vacation, we are offering our overview of recent significant events in the area of intellectual property in all three Baltic States and Belarus: victories in courts, major changes in trademark regulations, and new roles for domestic regulators.
We hope this brief read gives you a good glimpse of local legal environment for IP, and take this occasion to wish you a peaceful and enjoyable holiday season. See you next year!
Sincerely yours, Sorainen Intellectual Property Team
Belarus
Eurasian Economic Union trademark to be introduced after 2020
The agreement on a single EEU trademark was signed on 5 December. The agreement envisages the possibility to obtain a trademark registration covering all member countries of the EEU (Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia). So it will be similar to other “regional” trademarks such as EU trademarks. Relevant procedures are expected to be adopted before 2020.
Victory for major software development house in the IP Board of the Belarus Supreme Court
The Sorainen TMT team achieved victory for a major international software development company in a dispute under a software development contract on creation of an online service platform. The dispute was adjudicated by the IP Board of the Belarus Supreme Court and took about eight months overall from receiving a statement of claim to the final decision in favour of the client. The case followed all stages of software development starting from business analysis of the product to be developed, beta-version and release stages up to field testing of the product with evaluation of the source code and IP rights transfer also based on an email exchange between the parties. The Sorainen team consisted of the head of the TMT group, senior associate Kirill Laptev, and partners Alexey Anischenko and Maksim Salahub.
Successful cancellation of pirate registration of world renowned trademark by decision of the Belarus Supreme Court
Sorainen successfully represented the client, the rightholder of a world renowned character, in cancelling a local pirate trademark registration. The battle over the pirate registration started in 2014, after the client’s application for trademark registration was rejected due to an existing conflicting trademark. The first round included hearings before the Appeal Board of the local patent authority, where our client won, and hearings before the Supreme Court, where the opponent successfully challenged the Appeal Board decision. The basis for the client’s position was the fame of the character created by the client in Belarus. The second round included hearings before the Supreme Court. The basis for the client’s position was non-use of the opponent’s trademark for three+ years after registration. During the first round we contacted 50+ broadcasting, retail, distributing and other companies in Belarus, Russia, Ukraine and EU countries to collect evidence that the client’s trademark was known before the opponent filed for registration. A special population poll was conducted at our request by the National Academy of Science of Belarus. During the second round we contacted 50+ private companies and state authorities to collect evidence of non-use of the trademark by the opponent, as well as to prove the client’s interest in cancelling the registration. The Sorainen team was led by partner Maksim Salahub and senior associate Marina Golovnitskaya, who represented the client before the IP Board of the Belarus Supreme Court.
Lithuania
Trademark law changing
The Lithuanian parliament has passed a new revision of the Law on Trademarks. The law is yet to be signed by the President, but it will likely enter into force as of 1 January 2019. The most important changes include the possibility to register non-conventional marks, such as sound and movement marks and certification marks, strengthening protection against infringing marks in transit, and mandatory pre-court procedure for invalidation or cancellation of marks. Oppositions on absolute grounds will not be allowed, although interested parties will have a new possibility to provide remarks on absolute grounds. The registration procedure will have few changes, but fees are revised and restructured with a minor increase.
Wizz Air protects its marks against unfair use
On 3 October 2018, the Lithuanian Court of Appeal upheld a decision by Vilnius Regional Court, which ordered the Lithuanian company “Zigzag Travel” to transfer its domains containing the “wizzair” element to Wizz Air Hungary Krt. The owner of the „wizzair“ trademark, Wizz Air Hungary Krt., claimed that the respondent’s domains wizzair.lt and wizzair-skrydziai.lt infringed its intellectual property rights. Consistently with established Lithuanian case law, the Courts ordered transfer of the registered domains on the basis of trademark rights. However, as a further development, the Courts also prohibited “Zigzag Travel” from creating and/or using new domains containing the “wizzair” mark in the future, despite the respondent’s argument that the prohibition would be too broad – a novel decision in trademark disputes. It remains to be seen how broadly such prohibitions will be issued in the future.
Latvia
Decision on interests of performers and phonogram producers issued by the Latvian Supreme Court
The Latvian Supreme Court has issued another judgment regarding the rights of collecting societies to protect the interests of performers and phonogram producers.
The case concerned a claim by the Latvian Performers’ and Producers’ Association (LaIPA), a collecting society representing performers and phonogram producers, against cable TV operator Scintilla SIA. The latter had allegedly retransmitted audio-visual works without authorisation by the collecting society acting on behalf of neighbouring rights holders.
Amongst other claims, LaIPA sought to prohibit further retransmission of phonograms by Scintilla cable until a licence agreement is concluded between the two.
The Supreme Court stated that neighbouring rights holders are entitled to require the user of phonograms published for commercial purposes to pay a fair fee. However, neighbouring rights holders are not entitled to require prohibition of the use of such phonograms. The court pointed out that this is not an exclusive right belonging to neighbouring rights holders.
The Supreme Court cancelled the appellate court judgment on other grounds and returned the case to the appellate court for re-adjudication.
Estonia
Law amendment on the award of patent attorney profession to attorneys at law
The Estonian Government has approved a draft law which foresees the possibility to award the profession of patent attorney to attorneys at law on the basis of their experience as attorneys at law.
Currently valid law establishes the prerequisite that anyone applying for the profession of patent attorney must have worked for a patent attorney or for a company of patent attorneys in the area in which the patent attorney profession operates for at least the last four years. This made it difficult, if not impossible, for attorneys at law to join the patent attorney profession. At the same time, only patent attorneys are entitled to represent clients before the Estonian Patent Office.
The draft law has been passed to the Estonian Parliament where further changes to the initial proposal may be introduced.
Implementation of Directive (EU) 2015/2436
The Estonian Ministry of Justice has prepared a draft law on implementation of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. Directive (EU) 2015/2436 will replace the earlier directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 on the harmonization of the laws of the Member States relating to trade marks. It further harmonises the domestic rules of substantive and procedural law on trade marks while ensuring greater coherence between the European Union trade mark system and national trade mark systems.
One of the most important amendments to Estonian national law will be the extended competence of the Industrial Property Board of Appeal. Currently, the Board of Appeal resides with the Ministry of Justice. In future, it will reside with the Estonian Patent Office. Although the Directive requires the Board of Appeal to extend its competences solely in trade mark matters, the right to adjudicate certain matters in relation to other industrial property objects will also be transferred from the court to the Board of Appeal. In this connection, the structure of the Board of Appeal, as well as the basis for formation of the panel, will change. These changes will help to achieve a more efficient, higher-quality and faster procedure. |
