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Print articleDisclaimer in Trademark Registration vs. Copyright
October, 2008 -
By decision rendered June 25,
The plaintiffs, K. B. and UAB Restoranu Grupe FORTAS, sued one of the oldest breweries in Lithuania, AB Ragutis, for copyright infringement. The plaintiffs additionally sought revocation of the defendant’s trademark on grounds of likelihood of confusion between the trademarks and bad faith application.
K. B. created the mark FORTAS and transferred all copyrights to UAB Restoranu Grupe FORTAS, a restaurant services company; the latter company then registered FORTAS as a trademark for various catering services. UAB Restoranu Grupe FORTAS and AB Ragutis had signed a long-term cooperation agreement under which they both undertook to protect the reputation of the trademark FORTAS. AB Ragutis then registered a similar trademark for beer.
The Supreme Court rejected UAB Restoranu Grupe FORTAS’s claim to revoke defendant’s trademark registration on the ground of likelihood of confusion as the trademarks were registered for different goods and services. It also dismissed the claim that the application had been filed in bad faith, as the plaintiff and the defendant had entered into the long-term cooperation agreement. The Court noted that “when determining whether the application was made in bad faith one should take into consideration the factual circumstances at the time of submission of the application, but not circumstances that developed after that.”
Even though the Supreme Court remanded the case to the Court of First Instance for examination of the factual circumstances regarding the claim of copyright infringement, it ruled that “when a component of a trademark infringes a copyright, said component may not be disclaimed in the registration of the trademark as a disclaimer does not eliminate the infringement of the exclusive rights of the author or any other owner of the copyright. A disclaimer to a certain component of the trademark means that nobody is entitled to possess exclusive rights to this component. Registration of a trademark may be revoked in respect of some goods and/or services for which the mark has been registered, but not in respect of some components of the mark.”
This decision is significant, as the relation between copyright and disclaimer in the trademark registration was interpreted for the first time in Lithuanian case law. This is a final decision.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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