ITALIANA ROSSO and ITALIANA BIANCO found to be dissimilar to Bacardi's MARTINI marks

Lithuania

On May 22 2012 Bacardi & Company Limited filed a claim with the Appeal Division of the Vilnius District Court requesting that the court invalidate the registrations for the figurative trademarks ITALIANA ROSSO and ITALIANA BIANCO (Registrations Nos 66883 and 66884, pictured below), owned by UAB ITALIANA LT, and prohibit the use of ITALIANA BIANCO, ITALIANA ROSSO, ITALIANA LEMON, ITALIANA CHERRY and ITALIANA ORANGE on vermouth sold in bottles of a particular shape.  

 

                   

Bacardi based its claim on the following trademarks and design: 

  • MARTINI (Lithuanian trademark No 8229; CTM Nos 003505617 and 005952643) and PREMIATI CON 40 MEDAGLIE FILADELFIA 1876 ALESSANDRIA 1870 (CTM No 003511243; International Registration No 805709), registered in Class 33:

         

 

  • Registered Community design No 000593165:

 

The claim was based on Articles 7(1)(2), 7(1)(6) and 7(3) of the Law on Trademarks of the Republic of Lithuania, which provide that a trademark registration shall be declared invalid:

  • if it is identical, or misleadingly similar, to an earlier registered mark or application covering identical or similar goods and/or services;
  • if it is identical to a protected industrial design… or if its likeness to the [design] is misleading, except in cases where consent has been granted by the owner of the rights or its successor; and
  • where it becomes evident that the application for the registration of the mark was made in bad faith by the applicant.

On May 18 2015 the Vilnius District Court dismissed the claim, holding that the registrations for the trademarks ITALIANA ROSSO and ITALIANA BIANCO were valid in Lithuania.

In its decision, the Appeal Division followed the European courts’ practice and the national Methodical Guidelines on the Assessment of Similarity and Identity of Trade and Services Marks, and concluded that the compared trademarks were dissimilar, because the word ‘Martini’ dominated the overall composition of the plaintiff’s trademark, while the word ‘Italiana’ dominated that of the defendant’s trademarks and bottle; these words were also used on the caps and body of the bottles. The Appeal Division also noted that the compared labels contained different word, colour and figurative elements, and created a different overall impression. The court determined that the trademarks differed visually, phonetically and semantically due to the differences in their distinctive and dominant components and overall impression. The court also referred to public survey results, in which the respondents stated that the most important elements which differentiated the bottles were the word marks on the products, the labels, the form of the bottles and the colours, while other elements, such as the caps and the ornamentations on the bottles, were of less importance.

When assessing the similarity of the defendant’s trademarks to the registered design, the court agreed with the defendant’s arguments that the freedom of the designer when creating a bottle design is limited by technical requirements, and that this should be taken into account when assessing the individual characteristics of the bottles. The court analysed the form of the bottles, their indentations and convexities, and concluded that the parties’ bottles created different overall impressions and that the defendant’s trademarks were not similar to the plaintiff’s design.

With regard to the plaintiff’s argument that the defendant had unfair intentions, the court stated that this argument is a last resort when seeking to defend trademark rights and that such claim is not intended to cover all cases which do not fall within the other invalidation grounds provided by Article 7 of the Law on Trademarks.

The court noted that, although one of the bad-faith criteria is the fact that the applicant knew of the other party’s rights to that sign when filing a trademark application, that circumstance alone is not sufficient. Given that no similarity had been found between the defendant’s marks and the plaintiff’s trademarks and design, there was no legal basis for concluding that the defendant had acted in bad faith when filing the trademark application.

The plaintiff, relying on the Law on Competition, also alleged that the defendant had committed unfair competition acts. The court referred to the court practice whereby unfair competition acts are defined as acts through which the defendant benefits from the reputation of other entities, the imitation of goods and the misleading of consumers. Taking into account the long-term (12 years) and consistent use and registration of the defendant’s ITALIANA trademarks and bottle designs, there was no ground to infer that the defendant free-rode on the reputation of the plaintiff and its trademarks in order to market its products.

The plaintiff also referred to Article 36 of the Design Law and to a design owner’s rights to prohibit the use of similar designs on the market. However, the court concluded that there was no ground to prohibit the use of the bottle design used by the defendant as no similarity had been established.

Based on the foregoing, the Vilnius District Court concluded that the plaintiff’s claim should be dismissed in its entirety and that the trademarks ITALIANA ROSSO and ITALIANA BIANCO were valid.

Aušra Pakėnienė, AAA Law, Vilnius

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