Amendments to trademark law to come into force

After ratifying the Singapore Treaty on the Law of Trademarks on November 8 2012, Lithuania’s parliament has adopted amendments to Lithuania’s Law on Trademarks, which will enter into force on June 1 2013.

The amendments to the Law on Trademarks and the related amendments to the Law on Fees for the Registration of Industrial Property Objects, which will also enter into force on June 1 2013, are intended to simplify the procedures and reduce registration fees by approximately 25%.

Some of the most important changes to the trademark law are described below.

While, currently, only well-known trademarks and Community trademarks with a reputation enjoy protection against marks covering dissimilar goods or services, the amended law will extend such protection to international registrations designating Lithuania and national trademarks with a reputation in Lithuania.

To simplify the application procedure, the amended trademark law will allow the payment of application fees within a month of the filing date. Applicants only need to provide details of the payment - it will not be necessary to submit a paper copy of the bank transfer.

If a trademark is contested, the amended trademark law will allow the applicant or trademark owner to divide the trademark application or registration into several applications or registrations, with the obligation to pay application and/or registration fees for each separate application or registration.

Another novelty is that the assignment of trademark rights will not be permitted if:

• the trademark would become misleading as a consequence of the assignment; or
• the assignee does not submit proof of permission to use the trademark where such permission is required (eg, use of national symbols).

Another important change is that licences will have effect against third parties even if they are not recorded in the Lithuanian Trademark Register. In addition, it will no longer be necessary to submit a notarised copy of the licensing agreement for a licence to be recorded; a copy of the licensing agreement will be sufficient for recordal purposes.

Also included are important amendments pertaining to acquiescence. The amended law is clearer with regard to invalidation actions and avoids the difficulties concerning the interpretation of the phrase “obviously tolerating the use of a later mark for more than five years”, which appears in the current version of the law. The amended law clearly defines that a trademark may not be invalidated “if the owner of the earlier mark has known and has not opposed the use of the later mark” during a period of five years following registration.

The provisions concerning non-use cancellation actions have also been changed. The amended law no longer includes the provision stating that a trademark will be cancelled if it has not been put to use or if there have not been “serious preparations to start use” in the five years following registration. The amended law simplifies the grounds for non-use cancellation by simply stating that the mark must be put to genuine use within five years of the registration date.

Andrej Bukovnik, PETOŠEVIĆ, Ljubljana