MONTBLANC is recognized as well-known mark

The Appeal Court has recognized that the mark MONTBLANC is well known in Lithuania, despite the fact that it is known only by a small proportion of consumers (December 3 2007).

Montblanc-Simplo GmbH filed an action for the invalidation of Zaklady Tytoniowe w Lublinie SA's trademark MONT BLANK for goods in Class 34 of the Nice Classification. Montblanc claimed that the MONT BLANK mark is visually similar and phonetically and semantically identical to its earlier registered trademarks MONTBLANC for goods in Classes 3, 9, 14, 16, 18, 25 and 34. The Board of Appeals of the State Patent Bureau refused to invalidate Zaklady's trademark (Decision 2Ap-760). Montblanc appealed, requesting that the well-known status of its MONTBLANC mark be recognized.

The Vilnius District Court held that the volume of advertising and the duration and extent of use of the trademark MONTBLANC were insufficient to prove the well-known status of the mark. Montblanc appealed.

The Appeal Court first agreed with Zaklady and the lower court that Montblanc had provided insufficient evidence of the well-known status of MONTBLANC. However, the court considered that the goods covered by the trademark MONTBLANC (ie, luxury goods) represent only a limited market in Lithuania. Therefore, the possibilities of advertising are also limited.

In order to determine whether a trademark is well known, the courts must consider whether the mark is well known by the relevant public. The relevant public consists of:

• potential consumers of the goods and/or services at issue; and
  
  
• suppliers and buyers of the goods and/or services.

In the case at hand, the court had to determine whether the trademark MONTBLANC is well known by consumers of luxury goods. The court relied on a public survey which showed that 3.1% of Lithuanian consumers buy luxury goods and that 45.1% of these consumers are aware of the trademark MONTBLANC.

The court also took into account the fact that the trademark MONTBLANC has been recognized as well known in:

• the largest European countries; and
  
  
• Latvia, a country which is similar to Lithuania with regard to its geographic location, trade and information channels.

The court also took into account the duration, extent and geographical area of use of the trademark MONTBLANC (the duration of use of the MONTBLANC mark being far greater than that of Zaklady's mark).

Based on the evidence provided, the court recognized that the trademark MONTBLANC is well known in Lithuania. Moreover, it invalidated Zaklady's trademark, even though the trademarks MONTBLANC and MONT BLANK cover goods in different classes. In Lithuania, the owner of a well-known mark may prohibit the use of a similar or identical mark even if the latter covers different goods.

However, in Japan Tobacco Inc v Schrader-Bridgeport International Inc (Case 3K-3-1191/2003, December 15 2003), the Supreme Court declared that the invalidation of a trademark on the grounds that it is similar or identical to a well-known mark cannot be automatic where the goods and/or services at issue are not similar. Instead, the court must determine how the registration of the trademark would violate the rights in the well-known mark.

Ieva Auškalnyte, Law firm AAA Baltic Service Company, Vilnius