Unregistered mark and domain name held to infringe trade name

The Supreme Court of the Republic of Lithuania has ruled that use of the unregistered trademark BALDU CENTRAS and the domain name 'balducentras.lt' infringed the rights in the earlier registered trade name Baldu Centras (meaning 'furniture centre') because both the mark and the domain name were used as a means of commercial identification (Case 3K-3-272/2009, June 22 2009).
JSC Baldu Centras filed suit against competitor JSC Neiseris seeking an injunction preventing the latter from using the words 'baldu centras' as a trademark and as a domain name for its commercial activities. Baldu Centras based its claim on its prior rights in the corporate name Baldu Centras, which was registered in accordance with Lithuanian laws in 1996. Baldu Centras's rights in its corporate name had never been challenged.  
The lower courts enjoined Neiseris from using the mark BALDU CENTRAS and the domain name 'balducentras.lt' without additional distinctive elements. The Supreme Court upheld the decisions.
First, the Supreme Court stated that although the purposes of corporate names and trademarks are different, the protection of such signs must be consistent to avoid confusion among the public. Both are used as commercial identifiers to distinguish the goods or services of one company from those of others (ie, as a commercial identifier). In the present case, Neiseris used the words 'baldu centras' on a signboard situated at the entrance of its shop, separately from the name of the store, Renlena. The court thus concluded that Neiseris used the mark BALDU CENTRAS as a commercial identifier.
In its defence, Neiseris argued that the mark consisted of generic words which described its commercial activities. The Supreme Court agreed that the scope of protection of trademarks and corporate names depends on their degree of distinctiveness. However, the court did not prohibit the use of the words 'baldu centras' in general - rather, it held that use of the words as a commercial identifier without any additional distinctive elements was infringing. 
Further, the court stated that use of domain name 'balducentras.lt' by Neiseris also constituted use of the words 'baldu centras' as a commercial identifier. The court held that a domain name not only performs a technical function, but is also used as a means of identification. Therefore, Neiseris's use of the domain name 'balducentras.lt' infringed the rights in the corporate name Baldu Centras.
Finally, the court was not convinced by Neiseris's argument that it had registered the domain name in good faith and that the principle of 'first in time, first in right' should apply. The court concluded that even if a domain name has been registered in good faith, this principle does not necessarily apply if use of the domain name infringes the rights of a third party.
Evelina Norkaitiene, Law Firm AAA Baltic Service Company, Vilnius

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