Principles for protection of well-known marks established

The Supreme Court of Lithuania has issued two rulings that establish the basic principles regarding the protection of well-known trademarks in Lithuania.

In Beecham Group plc v Kalinin (3K-3-1103/2003), the Beecham Group plc (now merged into GlaxoSmithKline) had requested, among other things, the invalidation of the mark AQUARELLE on the basis of its well-known mark AQUAFRESH. The Supreme Court annulled the decisions of the first instance and appellate courts and held that (i) to be declared well known, a mark does not necessarily need to be the best known trademark on the market in the area covered by the junior mark, and (ii) where a registration is contested because the trademark is identical or similar to a well-known mark in Lithuania, the plaintiff must show that its trademark was well known at the time the contested trademark was filed for registration.

In Japan Tobacco Inc v Schrader-Bridgeport International Inc (3K-3-1191/2003), Japan Tobacco Inc had requested the invalidation of the mark CAMEL in Class 12 of the Nice Classification (vehicles) on the basis of its well-known mark CAMEL in Class 34 (tobacco and smoking accessories). The Supreme Court held that although a trademark similar or identical to a well-known mark cannot be invalidated automatically if the marks are not registered for the same goods or services, the courts must nevertheless determine whether the registration violates any rights in the well-known mark. Bad-faith registration is one of the factors that should be taken into consideration.

Vilija Viesunaite, AAA Legal Services, Vilnius