Patent Office gets confused in brewery brawl

Lithuania's Patent Office has issued what appear to be contradictory decisions in cases involving the registration of the trademarks ZIGULINIS and VILNIAUS ZIGULINIS by one brewery and GUBERNIJOS ZIGULINIS by a competitor brewery.

First, in Gubernija v Vilniaus Tauras, Gubernija opposed Vilniaus's registration of the marks ZIGULINIS and VILNIAUS ZIGULINIS for beer on the grounds that the word 'zigulinis' had been used by several breweries in the former Soviet Union, including Lithuania, to indicate a certain kind of beer. Therefore, argued Gubernija, the word is descriptive and/or generic and is not registrable.

The Patent Office rejected the opposition stating that Gubernija had not presented sufficient evidence showing that 'zigulinis' is descriptive and/or generic (eg, a public survey proving that consumers associate 'zigulinis' with a certain type of beer). Thus, the mark ZIGULINIS was held to be distinctive and Gubernija's opposition to Vilniaus's registration of ZIGULINIS and VILNIAUS ZIGULINIS was rejected.

Next, in Vilniaus Tauras v Gubernija, Vilniaus opposed Gubernija's registration of GUBERNIJOS ZIGULINIS for beer on the grounds that the mark is confusingly similar to its previously registered marks.

The Patent Office rejected the opposition on two grounds. First, the GUBERNIJOS ZIGULINIS trademark registration contains a disclaimer of the word 'zigulinis', and the similarity of the mark with Vilniaus's earlier marks cannot be based on a disclaimed element. Second, the word 'Gubernijos' in the trademark GUBERNIJOS ZIGULINIS is in no way similar to the marks ZIGULINIS and VILNIAUS ZIGULINIS and therefore consumer confusion is not likely.

Consequently, the earlier trademarks ZIGULINIS and VILNIAUS ZIGULINIS must co-exist with the GUBERNIJOS ZIGULINIS mark even though the Patent Office had stated in the first case that the mark ZIGULINIS is distinctive.

Ausra Pakeniene and Marius J Jason, AAA Legal Services, Vilnius