Nestlé fails to prove that ROLLTON was registered in bad faith

The Appeals Division of the State Patent Bureau has dismissed the opposition by Swiss company Société des Produits Nestlé SA against the application to extend protection to Lithuania of the international registration for the trademark ROLLTON filed by Russian company DHV-S.

Nestlé claimed that the registration of the mark ROLLTON is invalid based on the following arguments:

• The trademark ROLLTON (and red and yellow design) is confusingly similar to Nestlé's earlier trademark MAGGI (and red and yellow design) and figurative mark MAGGI (red and yellow design with no word element), and covers identical and similar goods in Classes 29, 30 and 31 of the Nice Classification. Article 7(1)(2) of the Law on Trademarks states that a trademark registration shall be declared invalid if it is identical or confusingly similar to an earlier registered mark, or if it covers identical or similar goods and/or services, so that there is a likelihood of confusion on the part of the public.
  
  
• DHV-S applied for the registration of the mark ROLLTON in bad faith. Under Article 7(3) of the law, a trademark registered in bad faith may be declared invalid.

The Appeals Division dismissed the opposition and declared that the international registration of the trademark ROLLTON should be upheld in Lithuania.

The Appeals Division based its decision on the fact that the overall impression of the opposed mark was different due to the existence of the verbal element 'Rollton'. Moreover, Nestlé does not have exclusive rights to the colours yellow and red; legal protection is granted to a specific combination of these colours, but the marks at issue use different combinations. The fact that both trademarks contain double letters (ie, 'GG' in MAGGI and 'LL' in ROLLTON) was insufficient to conclude that the marks are similar, especially as the marks are made up of completely different letters.

Nestlé also argued that DHV-S applied for the registration of the trademark ROLLTON with the intention of taking unfair advantage of the well-known character and reputation of Nestlé's trademarks. The evidence submitted by Nestlé showed that the trademark MAGGI is well known in Lithuania; however, the Appeals Division found that this evidence alone was insufficient to prove bad faith.

According to prevailing case law in Lithuania, in order to prove that a trademark is invalid on the grounds of bad faith, it is necessary to demonstrate that the owner of the opposed trademark acted in bad faith towards the interested party, and not merely that the actions of the owner were generally in bad faith.

Vitalija Banaitiene, Law Firm AAA Baltic Service Company, Vilnius