Marks consisting of geographic place name held to be distinctive for cheese

The Appeal Division of the Lithuanian State Patent Bureau has held that the trademarks RAMBYNAS and RAMBYNO for “milk and milk products” in Class 29 of the Nice Classification were valid (November 6 2013).

On December 19 2012 and January 31 2013 Akcinė bendrovė Vilkyškių pienas (Lithuania) filed oppositions (No PNZ-157 and PNZ-170) with the Appeal Division of the State Patent Bureau requesting the invalidation of the Lithuanian trademarks RAMBYNAS (Registration No 65934) and RAMBYNO (Registration No 66275), owned by Žemaitijos pienas (Lithuania).

The oppositions were based on Article 6(1), Paragraphs 2, 3, 4 and 5, and Article 7(3) of the Law on Trademarks of the Republic of Lithuania, which provide that a trademark registration should be declared invalid if:

• the sign is devoid of any distinctive character;
• the sign has become customary in the current language or in the good-faith and established practices of the trade;
• the sign consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of the rendering of the service, the mode of production or other characteristics of the goods and/or services;
• the sign is of such a nature as to mislead the public as to the nature, quality or geographical origin of the goods and/or services; and
• the application for the registration of the mark was made in bad faith.

The opponent argued that:

• the Rambynas cheese had been created by the opponent’s company in 1959;
• it had been produced by several manufacturers during the Soviet Union period; and
• ‘Rambynas’ had become customary in the relevant sector as identifying only a particular type of cheese produced in accordance with certain methods.

These arguments had been set forth in an Appeal Division decision issued in opposition proceedings on January 21 2002.

The opponent also stated that the word ‘Rambynas’ designates the geographic origin of the goods, as Rambynas is a geographical place - namely, a hill within the territory of a national park in Lithuania. Therefore, the marks were misleading in respect of goods not originating from that place.

In contrast, the applicant argued that the marks had acquired distinctive character through use and advertising in respect to the claimed goods in Lithuania, as he had been the only manufacturer of Rambynas cheese over the past 10 year. Therefore, consumers would not expect the goods to be produced on Rambynas hill, as the name of the hill does not add any additional value or quality to the goods. Consequently, consumers would not associate goods bearing the marks and their characteristics with Rambynas hill and would not be misled as to the place of origin of the goods.

The Appeal Division rejected the oppositions.

First, the Appeal Division stressed that the examination on absolute grounds in accordance to Article 6 had already been conducted by the Patent Bureau’s examiner and that a “double test” had been conducted after receipt of the opposition based on the same legal grounds.  

Second, the circumstances established in the January 21 2002 Appeal Division decision were not directly applicable in these proceedings, as the factual situation can change over a long period of time. Only the circumstances which were significant as of the filing date of the applications (ie, October 10 2011 and December 19 2011) should be taken into consideration.  

Third, the Appeal Division noted that, as is established in Article 6(2) of the Trademark Law, distinctive character can be acquired through use. 

According to the case law of Lithuania’s Supreme Court, it is possible that a sign which has been used for a long period of time by various producers, and has become customary in the relevant market sector, can acquire distinctive character if it is subsequently used by only one manufacturer.

According to the case law of the Court of Justice of the European Union, when assessing the distinctive character of a mark, the following may be taken into account:

• the market share held by the mark;
• how intensive, geographically widespread and long-standing use of the mark has been;
• the amount invested by the mark owner in promoting its mark;
• the proportion of the relevant class of consumers who, because of the mark, identify the goods as originating from a particular undertaking; and
• statements from chambers of commerce and industry, or other trade and professional associations.

It is not necessary to file evidence for all the above-mentioned factors; the key consideration is whether the evidence as a whole shows that the mark can perform a source-identifying function.

In the present case, Žemaitijos pienas had sold milk products bearing the mark RAMBYNAS since 2006; the Appeal Division found that the long-term, continued and uninterrupted use of the marks had been successfully demonstrated. Žemaitijos pienas was the only producer and user of the marks, which was not disputed by the opponent.

The public survey filed by the opponent showed that 27% of consumers associated the Rambynas cheese with Žemaitijos pienas. The Appeal Division stressed that, in accordance with the case law of the Supreme Court, the requirements for the protection of a mark which has acquired distinctive character are not as high and strict as those applicable to the assessment of whether a trademark is well known or has a reputation.

Based on the above, the Appeal Division confirmed that the marks RAMBYNAS and RAMBYNO had acquired distinctive character though use.

Further, the Appeal Division dismissed the opponent’s argument that the marks designated only a geographical place and were thus misleading. It found that consumers would not believe that the goods bearing the marks are produced on the Rambynas hill, and would not associate the characteristics of the goods with that place; nor would they be mistaken as to the geographic origin of the goods.

The Appeal Division also dismissed the opponent’s argument that Žemaitijos pienas had filed its applications to register the marks in bad faith.

The Appeal Division noted that, although one of the bad-faith criteria is the fact that the applicant knew of another person’s right to that sign when filing the trademark application, that circumstance alone was not sufficient for a finding of bad faith; all the circumstances at the date of filing of the trademark applications should be taken into account. It noted that the opponent had no right to RAMBYNAS/RAMBYNO on the relevant filing dates.  

Further, Žemaitijos pienas had not acted in an unfair manner vis-à-vis the opponent when filing its trademark applications. According to the Supreme Court, the mere intention to obtain exclusive rights to IP rights, including trademarks, does not mean that there is unfair competition.

Based on the foregoing, the Appeal Division concluded that the trademarks RAMBYNAS and RAMBYNO were valid.

Aušra Pakėnienė, AAA Law, Vilnius