Jurisdictional perspective: Latvia
The brand protection environment in Latvia has been fundamentally transformed by Gleissner’s filing activity. Petersona Patents – AAA Law trademark attorney Gunta Zarina explains more.
Gleissner-related trademark filings began to appear at the Latvian Patent Office in 2014, following the registration of his companies Grigorius Holdings and Fashion One Television. Suspicion initially arose when the first sets of filings were all registered to cover roughly the same list of goods and services (in Classes 9, 16, 38, 41 and 43). Moreover, many of the new marks were identical or very similar to prior EU trademarks. In some cases, the applicants had simply modified the signs slightly and added extra classes. Most of the attorneys reviewing the Latvian Trademark Registry noted an odd pattern across hundreds of trademarks, which appeared to be cloned or copied from elsewhere, with some even repeating well-known marks. Interestingly, most of the filings were word marks, with only a few including additional graphic elements.
The first red flag was the trademark registration for SEXY JAPANESE, which was involved in UDRP proceedings in 2015. Although Gleissner’s attempts to own the domain name failed, after publication of the decision, trademark lawyers became wary of the potential for blackmail or appropriation from Gleissner’s side. As a result, they began warning clients of a possible trademark squatter, who – they said – was overriding prior rights and evoking legal proceedings with the aim of acquiring the trademarks and domain names of other brand owners.
The next warning came when the Latvian Patent Office refused to register the trademarks LEHMAN BROTHERS and BRITISH AIRWAYS WORLD OFFERS. Gleissner’s attempts to acquire registrations for these and other world-famous brands were indicative of his malicious intent and a clear abuse of the rights of other owners. In addition, many of those who brought Latvian opposition proceedings against him faced, either before or during the proceedings, revocation actions for non-use before the EUIPO.
Although Grigorius Holdings originally appointed a representative for its first opposition case, no other oppositions against Gleissner marks were defended. In some early matters, it was even difficult to prove a relationship between Grigorius Holdings and Gleissner, because he was not named as a participant of the company and thus there was no legal proof of a legitimate connection. Thankfully, media reports on Gleissner’s schemes helped us to track down a genuine link to his Latvian trademarks as part of a larger global portfolio. On discovering the EU trademark NETOPIA (013679352), which listed Grigorius Holdings as the owner and Gleissner as the representative, we were finally able to establish a direct connection between the pair.
Key Latvian Gleissner cases
The common trend in Gleissner cases in Latvia is the element of bad faith, which departs from accepted principles of ethical behaviour and honest commercial and business practices.
In nearly all opposition cases – especially when the case law surrounding Gleissner’s activities was still developing – the Latvian Board of Appeal’s decisions of bad faith were attributed only to the overlapping of some goods and services. Whether bad faith existed in relation to the remaining goods and services had to be determined by the courts during appeal proceedings. As far as we are aware, in all appeal cases, Gleissner’s bad faith and malicious intent were found to apply to the disputed trademark as a whole, without the need to assess the proximity of goods and services. Therefore, when it comes to evaluating bad faith and its implications in Latvia, the courts’ position – which is more in line with EU case law – differs greatly from the Board of Appeal’s.
That said, there is no detailed case law laying out similar circumstances involving massive numbers of trademark filings motivated by bad faith. In addition, the Latvian Board of Appeal has stepped back from its strict position in instances where there were clear indications that Gleissner should have known about the existence of a mark due its fame (eg, oppositions against ROCKEFELLER, OMEGA, BOND and MULE) or in actual appropriation attempts (eg, the opposition against NIRVAM). In the latter example, Gleissner’s repeated attempts to obtain the registration, which included cancellation proceedings before the EUIPO and multiple Latvian trademark filings, led the Latvian Board of Appeal to believe that his intentions were motivated by bad faith regardless of the proximity of goods and services.
Jaxid GmbH v Grigorius Holdings
In 2016 German company Jaxid GmbH filed an opposition against the Latvian trademark JAXID (M 70 030) in Classes 9, 16, 38 and 41, registered in the name of Grigorius Holdings. The Latvian Board of Appeal acknowledged bad faith in relation to some identical/very similar goods and partially upheld the opposition.
In contrast, the Riga City Vidzeme District Court (the court of first instance) upheld Jaxid GmbH’s appeal in its entirety and deemed full invalidation of the mark to be reasonable despite the dissimilar goods and services. The court reasoned that, at the time of filing, Grigorius Holdings was driven by malicious intent in relation to all goods and services. Further, there was no evidence that the company had started to use any of the filed trademarks or had any commercial intentions whatsoever.
By taking into account real-life observations and the laws of logic, the court concluded that Gleissner’s deliberate attempts to register Latvian marks that were identical to several EU trademarks were not accidental, but rather malicious actions designed to harm the interests of third parties. In particular, the court noted that the main purpose of applying for a large number of trademarks and filing a large number of revocation requests was to obtain an unfair advantage. The artificial nature of those activities was not directed at the genuine desire to use the marks in the course of trade. Rather, the court viewed such behaviour as repetitive and contradictory to public interests, as well as to the principles of fair commercial and business conduct.
Kabushiki Kaisha Square Enix v Grigorius Holdings
In 2019 Japanese company Kabushiki Kaisha Square Enix brought an invalidation action against Grigorius Holdings in regard to the Latvian trademark registrations PARASITE EVE (M 72 692) in Classes 9, 16 and 28 and PARASITE (M 72 693) in Classes 9, 25 and 42. In its ruling the Riga City Vidzeme District Court held that foreign research articles, evidence of numerous shell companies related to Gleissner, various trademark disputes worldwide and a lack of intent to use either mark on the part of the applicant all led to a finding of bad faith at the time of filing.
More importantly, despite the dissimilarity of goods and services at issue, the court supported the claim that a ruling of bad faith could lead only to the total invalidation of the registrations. Further, the court recognised all claims that the applicant was involved in a global scheme that aimed to abuse and take advantage of the trademark system. The fact that Gleissner had used another shell company, Trademarkers Merkenbuerau CV, to file a cancellation action against the plaintiff’s mark before the EUIPO also played a major role in the court’s decision.
Energy Beverages LLC v Grigorius Holdings
In 2019 Energy Beverages LLC filed an opposition against the Latvian trademark registration BURN (M 73 657) in Classes 9, 25, 38 and 41. After receiving a partially satisfactory decision, in 2020 the company brought a second action against Grigorius Holdings in relation to the remaining goods in Class 9. The Riga City Vidzeme District Court highlighted the reputation of the EU trademark BURN and concluded that all evidence demonstrated that Grigorius Holdings’ attempts to register an identical mark were not accidental, but rather a deliberate and repeated act with one specific purpose – to appropriate trademarks owned by third parties and then either profit from these registrations or create further obstacles for their legitimate owners.
The Rockefeller University, 1979 Family Trust Licensor v Grigorius Holdings
In 2019 an opposition against the trademark registration ROCKEFELLER provided a rare case in which the Latvian Board of Appeal recognised bad faith on the part of Grigorius Holdings regardless of the similarity of goods and services.
To begin with, the board noted that the Rockefeller family was still considered one of the richest families in the United States, having made significant contributions to the US industrial, financial and political industries. Following this conclusion, the Board of Appeal admitted that Grigorius Holdings should have been aware not only of the registration of an identical earlier mark, but also of the fact that its mark reproduced the surname of one of the world’s richest families. As such, the choice to file the mark was not accidental, but rather a deliberate act for which there was no reasonable justification. The behaviour of Grigorius Holdings was deemed to be incompatible with the principles of fair commercial and business conduct.
Advice for rights holders
In the case of reputed marks, if a conflicting mark is detected at the early stages of application, the legitimate rights holder should file an official request (third-party observations) to the Latvian Patent Office to invalidate the mark based on the well-known status of its earlier mark. This ground for absolute refusal is established under the Trademark Law; however, it will only result in refusal if the earlier mark enjoys a high level of recognition.
Given that Gleissner-related entities are prone to initiate cancellation proceedings, especially before the EUIPO, we advise gathering proof of use of registered marks with respect of the relevant goods and services from the outset.
Further, as there is now a considerable amount of case law and evidence available related to bad faith on the part of Gleissner companies, we recommend seeking invalidation of the disputed mark in full. On the one hand, practice has shown that Latvian courts are more open to admit bad-faith elements in relation to the full scope of the trademark registration, rather than ruling on a partially satisfactory decision, as in the case of the Latvian Board of Appeal. Moreover, until now Gleissner has not defended his position during proceedings before the court. On the other hand, the board is becoming more inclined to assess bad faith more broadly. Nevertheless, the success rate of total invalidations before Latvian courts remains higher.
In fact, we strongly recommend challenging any conflicting Gleissner mark either through invalidation proceedings or cancellation proceedings due to non-use. Gleissner’s activities have been a major concern to many trademark owners, even more so because of his ambiguous intentions. Experience shows that there have been attempts of appropriation, extortion and initiation of domain disputes or cancellation proceedings based on his alleged prior rights. To prevent this from happening, Gleissner’s conflicting rights should be eliminated as soon as possible by whatever means available.
All of Grigorius Holdings’ trademarks are currently under prohibition of alienation – with an auction planned for the future. The auction could provide an opportunity for rights holders that have been affected by Gleissner’s activity to avoid costly, time-consuming legal actions. However, it is important to note that at the time of purchase, the bailiff will not conduct a background check of potential buyers and their legal rights to purchase marks. Therefore, there is a risk that some major trademarks could be purchased by unrelated third parties. The auction will cover a limited number of trademarks and the starting bid will be compared to the nominal value of the marks or less (official fees paid throughout the registration process). However, the amount to be recovered cannot exceed the costs to be reimbursed to the rights holder in accordance with the court’s rulings. More precise details of the auction are expected soon.