Lithuania welcomes international applications from foreigners

The Lithuanian Trademark Office (TO) has amended its practice regarding international applications filed through the Madrid Protocol. While the TO had until then refused such applications filed by non-Lithuanian parties, it declared in February:

"Based upon the legal acts of the Republic of Lithuania, the conclusion is to be made that the right to file an international application through the [TO] in Lithuania can be exercised by any legal person of Lithuania and by any legal person of a foreign state, which, pursuant to Article 2.45 of the Civil Code, is a participant in a legal person established in Lithuania..."

This means that any company, from any country, can choose Lithuania as the country of origin for their international applications under the Madrid Protocol, as long as that company has either an office or participates in a company that operates in Lithuania as a shareholder, member or partner. The Lithuanian TO is probably the first trademark office to accept international applications under these conditions: other national offices accept international applications filed in the name of a foreign company if the foreign company has an office in that country, but not if the foreign company has a subsidiary (ie, a separate legal entity) in that country.

This change of practice means that filing an international application through the Lithuanian TO could be an attractive option for foreign companies that have difficulties obtaining international registrations based on national applications or registrations in their home country. For instance, even though US companies seem to have shown little interest in international registrations to date, they may have been put off by the US Patent and Trademark Office's (USPTO) narrow identification of goods and services, which limits the scope of protection for an international registration. Another reason could be that the USPTO uses strict examination criteria and examines applications on absolute and relative grounds for refusal. Therefore, if an underlying national application fails, is withdrawn or cancelled, the international application will fail too (see The proposed union of the Madrid and Community trademark systems).

In contrast, the Lithuanian TO:

• allows broad lists of goods and services;
  
  
• examines applications only on absolute grounds for refusal; and
  
  
• refused protection to only 3% of the international applications it examined in 2003.

Marius J Jason, AAA Legal Services, Vilnius