SVYTURYS for spirits smashed by SVYTURYS for beer
In UAB "Svyturys - Utenos alus" v UAB "Mineraliniai vandenys" (Decision 2Ap - 752, December 24 2004), the Board of Appeal of the Patent Office of the Republic of Lithuania has ordered the cancellation of a SVYTURYS mark registered for spirits.
UAB "Svyturys - Utenos alus" (USUA) brought a claim before the Board of Appeal for cancellation of the SVYTURYS trademark, which is owned by UAB "Mineraliniai vandenys" (UMV). USUA argued that the mark was identical to its own SVYTURYS trademark registered for beer. It noted that both SVYTURYS marks (i) consist of the word written in capital letters and in standard black type, and (ii) are registered for goods of the same nature and purpose (ie, alcoholic beverages). As a result, the registration of UMV's mark was in breach of Part 2 of Article 7 of the Law on Trademarks, which prohibits, among other things, the registration of a mark that is identical to an earlier trademark where there exists a likelihood of confusion on the part of the public due to the identity or similarity of the goods and/or services covered by the marks.
USUA also referred to Part 3 of Article 7 of the Law on Trademarks and Article 10bis of the Paris Convention for the Protection of Industrial Property, which indicate that the registration of a mark may be declared invalid where there is evidence that the application for registration was filed in bad faith. USUA claimed that UMV filed its application to register SVYTURYS in order to benefit from the reputation in the earlier identical SVYTURYS mark belonging to USUA.
In response, UMV argued, among other things, that USUA was not using the actual word mark SVYTURYS, consequently, there could be no likelihood of confusion. It also noted that the goods covered by the two marks belong to different classes. Beer in Class 32 of the Nice Classification differs from spirits in Class 33 not only in manufacturing methods but also in terms of appearance, packaging and price.
The Board of Appeal upheld USUA's claim. It held that UMV's mark was identical to USUA's earlier mark and was registered for similar goods. The board pointed out that goods covered by opposing marks may be considered similar irrespective of whether they are in different international classes. In addition, the board held that UMV should have been aware of the earlier SVYTURYS mark for beer because it is an importer of, among other things, alcoholic beverages.
As a result of these findings, the board held that consumer confusion was likely and it ordered the cancellation of the contested mark.
Loreta Pazeraite, AAA Legal Services, Vilnius
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