Lithuania Amends Trademark Law

After Lithuania’s parliament ratified the Singapore Treaty on the Law of Trademarks on November 8, 2012, it also adopted the amendments to Lithuania’s Law on Trademarks, which will enter into force on June 1, 2013.

The trademark law amendments and the related amendments to the Law on Fees for the Registration of Industrial Property Objects, which will also enter into force on June 1, 2013, are intended to simplify the procedures and reduce registration fees by approximately 25 percent.

Some of the most important changes to the trademark law are described below.

While currently only well-known trademarks and CTMs with reputation enjoy protection against marks covering dissimilar goods or services, the amended law will extend the protection to international registrations designating Lithuania and national trademarks with a reputation in Lithuania.

To simplify the application procedure, the amended trademark law will allow payment of application fees within a month after the filing. Only details of payment will need to be indicated without providing paper copy of the bank transfer.

In case a mark is contested, the amended trademark law will allow a division of the trademark application or registration into several applications or registrations with the obligation to pay application and/or registration fees for each separate application or registration.

Another novelty is that the assignment of trademark rights will not be permitted if:

• The trademark would become misleading as a consequence of the assignment; or
• If the assignee does not submit proof of permission to use the trademark where such permission is required (use of national symbols for example).

Another important change is that licenses will have effect against third parties even if they are not recorded in the Lithuanian trademark register. In addition, it will no longer be necessary to submit a notarized copy of the license agreement for the recordal of a license. A copy of the license agreement will be sufficient for recordal purposes.

Also included are important amendments pertaining to acquiescence. The amended law is clearer in regard to invalidation actions and avoids difficulties with interpretation of “obviously tolerating the use of a later mark for more than five years” as defined in the current version of the law. The amended law more clearly defines that the trademark may not be invalidated “if the owner of the earlier mark has known and has not opposed the use of a later mark” within five years after its registration.

The provisions on the non-use cancellation actions have also been changed. The amended law no longer includes the provision stating that a trademark will be cancelled if it has not been put to use or if there have not been “serious preparations to start use” for five years since the registration. The amended law simplifies the non-use cancellation grounds, i.e. it simply states that the mark must be brought into genuine use within five years of the registration date.

By: Andrej Bukovnik

For more information, please contact Andrej Bukovnik at our Slovenia office.