Report Q168

1.

Is there any requirement for use of a mark "as a mark" for the purposes of:

Acquiring a mark

Exclusive rights to a trademark may be ensured only by registration of the trademark – either with the Patent Office of the Republic of Latvia or by International registration done pursuant to the provisions which are in force in Latvia concerning the International registration. (Republic of Latvia Law on Trademarks and Indications of Geographical Origin, 1999, further in the text – LLT/99). Only well-known marks enjoy more liberal regulations and in fact are protected without registration. LLT/99, Article 4(5).

Maintaining of a trademark registration

According to the provisions of LLT/99, Article 23, the owner has to commence the actual use of the trademark in Latvia in connection with the goods or services with respect to which it has been registered. As to this, the actual use of a trademark shall be construed as the use of the trademark (also in a form differing in individual, non-essential elements) on goods and their packaging, on any documentation accompanying the goods, in the advertising of the goods or services, or in relation to other business activities in connection with the relevant goods or services. Altogether, the actual use shall be construed as the use of a trademark in the course of trade, with the purpose of gaining and maintaining a certain market position for the respective goods or services, as well as on goods or their packaging in Latvia solely for export purposes.

Establishing infringement

Pursuant to the regulations of LLT/99, the requirements for establishing of infringement are the following: use (affixing, attachment) of the infringing trademark on the goods or on the packaging thereof; offering the goods, or putting them on the market or stocking them for these purposes; providing services or offering them; importing or exporting the goods and using the trademark on business papers and in advertising. However, also as infringement is related an illicit use of the trademark intended for purposes other than distinguishing goods or services (marking of goods, indication of the origin of the goods or services), if it is proven that the use of such sign in the absence of appropriate justification gives the impression of connection with this trademark, or takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark.

2.

Is there any definition of what is the use "as a mark" either in statute or case law?

There is no precise and distinguished definition, however according to the LLT/99, Article 4 and Article 23 the following activities are understood as the use of the mark:

• use(affixing, attachment) of trademark on the goods or on the packaging thereof;

• offering the goods, or putting them on the market or stocking them for these purposes;

• providing services or offering them under the said trademark;

• importing or exporting the goods and using the trademark on business papers and in advertising

• use in relation to other business activities in connection with the relevant goods or services.

3.

Is there any difference in the assessment of use "as a mark" between the acquisition, maintenance and infringement of rights?

In general, there is no particular difference (apart from the fact that trademark rights can be acquired solely by registration in Latvia), but it must be admitted that for explanation of the sense of "use as a mark", more peculiar restrictions and various interpretations are characteristic in procedure of establishing infringement of trademark rights rather than maintenance of trademark rights. This is largely dependant on the national court and The Board of Appeal.

4.

Is any of the following considered to be use "as a mark":

In general – according to the Latvian laws, the explanation of "use as a mark" does not go beyond the traditional sense, i.e. indication of origin or identity; however the assessment of unconventional uses is closely linked to each individual case. For more clearance, it should also be admitted that Latvia lacks any precedent (and thus also legal practice) in relation to points 4.1. and 4.2., therefore the assumptions mentioned below are mostly theoretical.

4.1

Use on the internet, as a metatag, in linking or framing

As regards maintenance of trademark rights, according to the LLT/99, Article 23, all of the above uses are disregarded to be "use as a mark", but sometimes they can be perceived as advertising, which in general is related to traditional forms of trademark use. As concerns infringement – they are also not considered to constitute trademark infringement, unless they are possible to be attributed as "illicit use of the trademark intended for purposes other than distinguishing goods or services (marking of goods, indication of the origin of the goods or services), if it is proven that the use of such sign in the absence of appropriate justification takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark" (LLT, Article 4(9)).

4.2

Use by fan clubs or supporters

In the case of maintenance of trademark rights – in general, this does not differ a lot from the situation discussed in 4.1. and the same relates also to trademark infringement issues, therefore please see 4.1.

4.3

Parody

This, under no circumstances can be related as valid use for the purposes of maintenance of trademark rights, because, parody, according to the provisions of LLT/99, Article 23(4), can never "be construed as the use of a trademark in the course of trade, with the purpose of gaining and maintaining a certain market position for the respective goods or services”. However, despite the evasive definition in the LLT/99, Article 4(9), which can be attributed to the case of parody: "illicit use of the trademark intended for purposes other than distinguishing goods or services (marking of goods, indication of the origin of the goods or services), if it is proven that the use of such sign in the absence of appropriate justification takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark", this is considered clear trademark infringement.

4.4

Comparative advertising

Akin to parody (discussed in 4.3.), this is also not a valid ground for the maintenance of trademark rights, however in relation to infringement of rights, it is considered as use "as a mark" and can be restricted under the regulations of LLT/99, Article 4(9), which prohibits "illicit use of the trademark intended for purposes other than distinguishing goods or services (marking of goods, indication of the origin of the goods or services), if it is proven that the use of such sign in the absence of appropriate justification takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark". Moreover, comparative advertising (as well as parody to some extent) is regulated also by Advertising Law (further in the text – AL) and Competition Law (further in the text – CL).

5.

Are unconventional uses objectionable under trademark or other laws?

If unconventional uses serve for a commercial purpose, they are heavily restricted by the provisions regarding unfair competition under the CL. According to the regulations of CL, unfair competition is prohibited and "unfair competition may also occur as: the dissemination of false, incomplete or distorted information regarding another market player or its employees, as well as, in respect of the goods produced or sold by such a market player, the economic significance, quality, form of production, characteristics, quantity, usefulness, prices, their information and another provisions, which may cause losses to this market player". (CL, Article 22(3)). There are especially strict regulations regarding the comparative advertising under the AL. Provisions of AL object to the unconventional trademark use in the form of comparative advertising, if it: "creates confusion between the advertiser and competitor, or between the advertiser and the company, trade mark, brand names or other distinguishing marks, goods or services of a competitor, if it defames a competitor, or the name (firm name), trade marks, brand names or other distinguishing marks, goods, services or operations, or personal characteristics and the like of a competitor and if it unfairly uses the name (firm name), trade mark, brand name or other distinguishing marks of a competitor or the reputation of the designation of origin of a competing good." (AL, Article 9(3)).

6.

Are "well-known", "famous", "notorious" or "reputed" marks used on dissimilar goods and services protected?

First, in Latvia only "well-known" marks are identified, others are considered to be variations of "well-known" marks and there are no particular regulations regarding any of them, except "well-known” marks. However, yes, LLT/99 clearly states, that "the owner of a trademark, that is well-known in Latvia, is entitled to prevent the use, in the course of trade, of any sign which constitutes a reproduction, an imitation, a translation or a transliteration, liable to create confusion, of the well-known trademark, in relation to goods or services, that are identical or similar to those covered by the well-known trademark. The owner of a trademark, that is well-known in Latvia, is entitled to prevent the use, in the course of trade, of any sign which constitutes a reproduction, an imitation, a translation or a transliteration, of the well-known trademark, also in relation to goods or services, that are not similar to those covered by the well-known trademark, provided that consumers may perceive the use of such a sign as indicating a connection between these goods or services and the owner of the well-known trademark, and provided that such use may be detrimental to the interests of the owner of the well-known trademark."(LLT/99, Article 4(7)).

Summary

In general, Latvian trademark law confines use "as a mark" to the traditional indications of origin and identity, however some of the unconventional uses are still disputable in relation to trademark maintenance and infringement issues. Such unconventional uses as parody and comparative advertising are also regulated by Competition law and Advertising law.

As Latvian trademark practice lacks notable precedents in relation to unconventional use of trademarks, it should be emphasized that those questions have not been seriously raised in Latvia and consequently – considerations on the discussed unconventional uses are mostly theoretical.

In relation to well-known marks, the protection is broader and those marks are protected also to dissimilar goods and services than those registered. This, undoubtedly, has a certain impact on the possibility of unconventional uses.