Trademark invalidated due to bad-faith registration

The Board of Appeal of the State Patent Bureau of the Republic of Lithuania has upheld an opposition filed by Lucas Industries Limited and invalidated the trademark LUCAS, which was owned by a physical person located in China (Case 2Ap-1246, April 8 2010).
First, Lucas Industries alleged that the trademark LUCAS:
  • was similar to the earlier registered trademarks LUCAS, LUCAS AUTOTECH and LUCAS BRAKE CHECK CENTER; and
  • was registered for identical and similar goods in Class 7 of the Nice Classification.
Therefore, there was a likelihood of confusion among consumers.
The Board of Appeal examined the overall impression conveyed by the marks at issue and held that the dominant element of the marks was the identical word element 'Lucas'. The board recognized that the opposed trademark contained hieroglyphic elements, while Lucas Industries' marks contained the additional elements 'Autotech' and 'Brake Check Center'. However, the board considered that these additional elements were either descriptive or decorative. Based on the fact that the dominant element was identical, the board concluded that the marks were visually, phonetically and conceptually similar.
Turning to the comparison of the goods, the board stated that the Class 7 goods covered by the opposed mark (“spark plugs”) were similar to the goods in Class 7, as well as the services in Classes 37, 39, 41, and 42 (which are directly related to vehicles), in respect of which the earlier marks were registered.
Taking into account the high level of similarity between the marks and the similarity of the goods, the board concluded that the parties' marks were confusingly similar.
Second, Lucas Industries alleged that the application for the opposed mark had been filed in bad faith. Lucas Industries claimed that its earlier LUCAS marks were famous and, therefore, the owner of the opposed mark had sought to take advantage of the reputation of the earlier marks when applying to register a confusingly similar mark.
The board took into account the evidence submitted by Lucas Industries - namely:
  • evidence showing that Lucas Industries was a well-known supplier of vehicle spare parts and supplied goods, including spark plugs, under the trademark LUCAS;
  • evidence showing that the owner of the opposed mark owned a number of registrations that were identical, or confusingly similar, to the well-known trademarks of third parties; and
  • evidence that unfair competition and infringement proceedings involving the LUCAS mark had taken place between the parties in other countries.
The board held that the owner of the opposed mark was aware that Lucas Industries owned several marks including the word 'Lucas'. Therefore, the owner had acted in bad faith when registering the mark for goods in Class 7.
Consequently, the board concluded that the opposition had been satisfied on both grounds and declared that the opposed mark was invalid.
Evelina Norkaitiene, Law Firm AAA Baltic Service Company, Vilnius

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