Edita Ivanauskienė September 5 2011 Soviet-era marks at risk of invalidation? Ellex | Intellectual Property - Lithuania Edita Ivanauskienė Intellectual Property IntroductionPharmaceuticalsBreadCommentIntroductionAfter Lithuania regained independence in 1990 and established its trademark protection system, companies rushed to register signs which had been created and used for goods in the Soviet Union. In spite of this, other producers or distributors also registered related marks in Lithuania, applied for registration or simply used unregistered marks incorporating such signs. However, the courts have subsequently shown that they are prepared to invalidate such trademarks, finding them to be generic and lacking in distinctive character, unless a trademark is found to have acquired distinctive character by use or to contain other distinctive elements.PharmaceuticalsThe first such challenge related to the word mark NEOCITRAMONAS,(1) which was registered in Class 5 (for medicines for human use) by AB Sanitas, a Lithuanian pharmaceutical company. This trademark was challenged after the Patent Office issued a negative decision against another company, Sealine LLC. The latter's trademark CITRAMON-FORTE STIROL, which was registered in Class 5, was annulled following opposition by Sanitas and another pharmaceutical company, UAB Veratrum.(2)The distinctiveness of the trademark NEOCITRAMONAS and the word element 'citramon' was challenged by a Latvian company, SIA StirolBiofarm Baltikum. The civil case was heard twice at all levels of the Lithuanian court system (for further details please see "Popularity of medicinal product names does not make trademarks customary"). On May 13 2011 the Supreme Court rendered a final decision,(3) recognising that the element 'citramon' was unprotected by exclusive rights, as it had been used by different producers and distributors for goods of the same type for a long period. The court noted that the word had been used as a name for medicinal products containing paracetamol, aspirin and caffeine for over 50 years. In former Soviet republics and elsewhere, medicinal products sold under the name 'citramon' were among the most popular of their type and were widely recognised by consumers as painkillers. Therefore, the court held that 'citramon' had lost its specific identifying function, as it had become a customary name used by the average Lithuanian consumer for identifying a well-known type of goods (ie, painkillers).The court reached a similar conclusion in Liuks & CorpusMedica v Farmak,(4) a decision rendered on March 2 2010 in a case relating to the term 'validol'. The court held that the trademarks VALIDOL(5) and BAЛИДОЛ VALIDOLUM,(6) which were registered in Class 5, were invalid. It found that 'validol' was generic and non-distinctive in relation to goods in Class 5, specifically pharmaceutical preparations containing methyl ester of isovalerian acid. The court confirmed the lower courts' findings that the word element 'validol' had become customary in everyday language and in established, good-faith trade practice. The court considered: the evidence of the use of 'validol' for painkillers by numerous producers of pharmaceuticals in the Soviet Union; and the widespread use of the word to describe painkillers, by internet users generally and by professionals and academics specifically. On this basis, it found that the sign was generic and the registrations were invalid.The Supreme Court confirmed the lower courts' ruling that Farmak had not presented evidence that the sign had became distinctive through longstanding use. However, in the Neocitramonas case the Supreme Court held that NEOCITRAMONAS had "crossed the barrier" - the trademark as a whole could be considered to have acquired distinctive character through use. It was protected through exclusive rights due to its longstanding use by Sanitas, its use for a significant volume of products and the public's knowledge of it (as confirmed by a public survey). The court stated that in deciding whether a sign can be protected because it has acquired distinctiveness through use, the level of identification of commercial origin by consumers need not be so high as to prove that the trademark is well known or has a reputation. However, despite recognising distinctive character in NEOCITRAMONAS as a whole, the court recognised the word 'citramon' as an unprotected element of the trademark.BreadThe Court of Appeal analysed the same problematic issues in Baltasis pyragas v Vilniaus duona.(7) UAB Baltasis pyragas sought the invalidation of UAB Vilniaus duona's trademarks VILNIAUS BOČIŲ DUONA(8) and BOČIŲ DUONA RYE BREAD „BOČIŲ" 1.5 kg,(9) registered in Class 30 for bread.'Duona' means 'bread' in Lithuanian. Baltasis pyragas contended that the term 'Bočių bread' is universally understood as the name for a kind of black rye bread. Therefore, the phrase had become generic for this kind of bread. Unlike the first instance court, the Court of Appeal found that the evidence before it confirmed that Bočių bread had been created in 1987 in the Palanga bread factory. The technical instructions and recipes for its preparation had been communicated to all bakery companies that belonged to the Lithuanian Food Industry Union in 1990. Bočių bread had been marketed by a number of companies before the application for the two trademarks. Moreover, it was shown that: most of the Lithuanian population associates the term 'Bočių bread' with a type of black, coarse, sweet-and-sour bread; and the word 'Bočių' is primarily associated with the idea of 'ancestors' or 'grandparents', not with the producer UAB Vilniaus duona. The court held that the term 'Bočių duona' had lost its distinctive features, becoming a universally known name and acquiring a customary meaning in current language and fair commercial practice.Consequently, the trademark VILNIAUS BOČIŲ DUONA was invalidated and 'Bočių duona' was recognised as an unprotected element of the trademark BOČIŲ DUONA RYE BREAD „BOČIŲ" 1.5 kg. It remains to be seen whether the Supreme Court will reach the same conclusion.CommentThese decisions show that if a trademark includes word elements which have been used for a long period by others to mark the same goods, and if the owner of a trademark containing such signs has tolerated similar trademark registrations in the market, such elements are likely to be declared generic and non-distinctive. If this happens, the trademark will be invalidated if it does not contain other distinctive features or has not acquired distinctiveness through use.For further information on this topic please contact Edita Ivanauskienė at Lideika, Petrauskas Valiunas ir partneriai LAWIN by telephone (+370 5 268 1888), fax (+370 5 212 5591) or email ([email protected]).Endnotes(1) Application on March 22 1996; registration on January 4 1999.(2) Sanitas v Sealine Inc, Appellate Division of the Patent Bureau; 2Ap-811; October 4 2005.(3) SIA Stirolbiofarm Baltikum v AB Sanitas, 3K-3-255/2011, May 13 2011.(4) Supreme Court, 3K-3-105/2010, March 2 2010.(5) Application on April 13 2001; registration on December 11 2001.(6) Application on April 28 1998; registration on February 11 2000.(7) 2A-199/2011.(8) Application on Novermber 7 1997; registration on August 10 1999.(9) Application on November 11 1997; registration on August 10 1999.