REPUBLIC OF LITHUANIA
LAW
ON
TRADEMARKS AND SERVICE MARKS
Chapter 1
General Provisions
Article 1. Objective of the Law
This Law establishes the procedure for the registration of
trademarks and service marks, their legal protection and their
use in the Republic of Lithuania. For the purpose of this Law,
the term "mark" shall be used and shall cover both trademarks and
service marks.
Legal and natural persons shall mark manufactured and
presented goods or rendered services with trade (service) marks
registered with the State Patent Bureau of the Republic of
Lithuania.
Chapter 2
Definition and Protection of Marks
Article 2. Definition of Marks; Signs Capable of
Constituting a Mark
Any sign which distinguishes the goods of one person from
those of another person or the services rendered by one person
from the services rendered by another person and which can be
represented graphically shall be considered to be a sign capable
of constituting a mark.
In particular, the following signs may constitute a mark:
1) words, personal names or slogans;
2) letters and numerals;
3) pictures, emblems;
4) three-dimensional forms, including the shape of products
and of their packaging and containers;
5) color, combinations of colors and arrangement of colors;
and
6) any combination of the above mentioned signs.
Article 3. Absolute Grounds for Refusal
A sign shall not be capable of constituting a mark on any of
the following grounds:
1) it has no distinctive character;
2) it become the generic name for the goods;
3) it exclusively designates, in trade, the kind (type),
quality, quantity, intended purpose, value, place of origin, time
or means of production of the goods or of rendering of the
services, or other characteristics of the goods or services;
4) it is capable of misleading the public; and
5) it is contrary to morality or public order, including
ethics of society and humanitarian principles.
Article 4. Further Grounds for Refusal
A sign shall not be registered if it is identical or
confusingly similar to:
1) marks which are already registered or applied for the
same or similar goods or services with the State Patent Bureau of
the Republic of Lithuania, and which enjoy prior rights;
2) marks which are well known in the Republic of Lithuania
and which belong to other legal or natural persons;
3) firm names or style and signboards of such firms
belonging to other natural persons or legal entities who acquired
the right in these names or means before the application date or
priority date of the mark;
4) appellations of origin and indications of source of the
goods protected in the Republic of Lithuania, except where those
names or indications are included as an unprotectable element in
mark to be registered in the name of a person who has the right
to use a specific appellation of origin or indication of source;
5) a protected industrial design, a work protected by
copyright, the right to personal name or portrayal, unless the
holder of the said rights has given his consent; and
6) the official armorial bearings, flags, official names and
emblems of states, the guarantee and hallmarks, stamps, medals,
decorations and symbols of religion as well as the abbreviated or
full names of international organizations, unless the relevant
institution has given its consent.
Chapter 3
Registration of a Mark
Article 5. Filing of an Application
A natural or legal person wishing to register a mark shall
file an application with the State Patent Bureau. The application
may be filed in the name of several natural or legal persons or
both.
A representative may act on behalf of the applicant for the
purposes of filing the application in the name of the applicant.
Foreign legal and natural persons shall file applications with
the State Patent Bureau through a patent attorney of the Republic
of Lithuania.
An application shall relate to one mark only.
An applicant filing the application shall pay the fees.
Each application shall be filed in Lithuanian.
Article 6. Application for the Registration of a Mark
The application for the registration of a mark shall
contain:
1) a request stating the name and address of the applicant,
as well as, where applicable, the name and address of the
representative. Where the applicant is a natural person, the name
to be indicated is the family or principal name. Where the
applicant is a legal person, the name to be indicated is the full
official designation of the legal entity;
2) a representation of the mark applied for;
3) the list of the goods and services for which the
registration is sought, grouped according to the classes of the
International Classification of Goods and Services established by
the Nice Agreement Concerning the International Classification of
Goods and Services for the Purposes of the Registration of Marks;
4) a document evidencing that the fees have been paid;
5) where applicable, a document evidencing powers of the
representative;
6) where applicable, an indication evidencing that the mark
applied for is three-dimensional;
7) where applicable, an indication evidencing that a shade
of color, a combination or an arrangement of colors is claimed as
a distinctive feature of the mark; and
8) an indication evidencing that the mark applied for is a
collective mark, together with a copy of the relevant regulations
relating to the use of the collective mark.
Article 7. Priority Rights
The application may contain a request to grant the priority
of one or more earlier applications for the same mark filed by
the applicant in a country which is party to the Paris Convention
for the Protection of Industrial Property if the said application
was filed by the applicant or his successor in title with the
State Patent Bureau within six months from the filing date of the
first application or applications.
The application may contain a request to grant the priority
of the date on which the goods bearing the mark which is the
subject of that application were first exhibited at an official
or officially recognized international exhibition if the
application was filed with the State Patent Bureau within six
months from the opening date of the exhibition.
An applicant who intends to benefit from the provisions of
paragraphs (1) or (2) above shall submit before the State Patent
Bureau a certified copy of the first application or applications
or a certificate issued by administration of the exhibition at
which goods bearing the mark had first been demonstrated. That
document may be submitted at the time of filing of the
application in the Republic of Lithuania or within three months
from that date.
If the State Patent Bureau finds that the requirements under
paragraph (3) have not been fulfilled, the request referred to in
paragraphs (1) and (2) shall be considered not to have been made.
Article 8. Formal Examination of an Application
A formal examination shall be performed within one month
after receipt of an application for the registration of a mark at
the State Patent Bureau.
If the application meets the requirements of Article 6 of
this Law, the State Patent Bureau shall accept the application
and grant a filing date and number.
The State Patent Bureau shall address to the applicant a
notification of acceptance of the application. That notification
shall indicate the filing date, number of the application, the
classes of the goods or services covered by the application and
the name and address of the applicant.
If the State Patent Bureau considers that the application
does not fulfill all the requirements of Article 6, it shall
notify accordingly the applicant or his representatives. If the
application is not corrected within three months from the date of
notification, it shall be considered not to have been filed.
Article 9. Substantive Examination of the Sign Applied
The examiner of the State Patent Bureau shall examine
whether a mark which is the subject of a an application meets the
requirements of Article 3 of this Law.
Where the examiner of the State Patent Bureau considers that
a mark does not meet the requirements of Article 3 of this Law,
it shall reject the application and notify the applicant
accordingly.
The applicant shall have the right, within three months from
the date of notification, to argue against the decision of the
examiner of the State Patent Bureau, failing which, the
application shall be rejected.
The examiner of the State Patent Bureau shall, on the basis
of the arguments presented by the applicant, re-examine the
application and notify the applicant of its decision.
If the applicant does not agree with the decision of the
examiner of the State Patent Bureau following re-examination of
the application, he shall have the right, within three-months
from the date of receipt of the notification referred to in
paragraph (4), to file, with the Section of Appeals of the State
Patent Bureau, a request to review the said decision. The
applicant shall have the opportunity to take part in the hearing
before the said Section of Appeals. The decision of the Section
of Appeals shall be notified to the applicant.
The applicant shall have the right, within a period of three
months from the date of receipt of the notification of the
decision of the Section of Appeals, to appeal against the said
decision before the Court, as prescribed in this Law.
The examiner of the State Patent Bureau shall notify to the
applicant the final decision to register the mark. The applicant
shall, within three months from the date of receipt of the above
notification, pay the fee. If the applicant fails to pay the fees
in due time, the registration of the mark shall not be effected.
Article 10. Withdrawal of the Application
The applicant shall have the right to withdraw his
application at any stage of the examination procedure or to limit
the list of goods or services of the application.
Article 11. Registration of the Mark
The State Patent Bureau shall register trademarks in the
Register of Trademarks and Service Marks of the Republic of
Lithuania.
In respect of each registration, the Register of Trademarks
and Service Marks of the Republic of Lithuania shall indicate the
following: a representation of the mark; the list of goods and
services in respect of which the mark has been registered with an
indication of the corresponding class or classes of the
International Classification of Goods and Services for the
Purposes of the Registration of Marks; the number under which it
has been registered; the name and address of the holder of the
registration; the filing date and number of the application; the
date of the registration and the date of the expiration of the
registration; if conventional priority is claimed under paragraph
(1) of Article 7 of this Law, an indication of earlier priority
with the identification of the office with which the application
whose earlier priority is claimed was filed, as well as the name,
number and the filing date of that application; if priority is
claimed under paragraph (2) Article 7 of this Law, the name and
the opening date of the exhibition of the goods bearing the mark;
the name of the representative, if any; where applicable, an
indication that the mark is a collective mark, a three-
dimensional mark and that color is claimed as a distinctive
feature of the mark as well as other data regarding registration,
usage and protection of the mark.
Upon request by any person having paid the prescribed fee,
the State Patent Bureau shall issue copies of the Register of
Marks in respect of a registration.
Article 12. Publication of the Registration and
Opposition
Once the registration has been entered in the Register of
Trademarks and Service Marks of the Republic of Lithuania, it
shall be published in the Official Bulletin of the State Patent
Bureau.
Within three months from the date of publication, any
interested person may, after payment of the fee, file an
opposition against the registration of a mark on the basis that
it does not comply with the provisions of Articles 2 to 4 of this
Law. The opposition, which shall be motivated, shall be filed in
writing with the Section of Appeals of the State Patent Bureau.
The holder of the registration shall be notified of the
opposition and be given a right to submit his observations
thereon within three months.
If the opposition is rejected, the Section of Appeals of the
State Patent Bureau shall notify accordingly the person who filed
the opposition and the applicant.
If the opposition is accepted, the registration shall be
declared void in whole or in part and cancelled accordingly. The
decision of the Section of Appeals of the State Patent Bureau to
that effect shall be published in the Official Bulletin.
Article 13. Issuance of a Registration Certificate
The State Patent Bureau shall issue a registration
certificate to its holder if, pursuant to the provisions of
paragraphs (2) or (3) of Article 12 of this Law, an opposition
was not filed or was rejected.
The registration certificate shall contain all the
information contained, in respect of a given mark, in the
Register of Trademarks and Service Marks of the Republic of
Lithuania as provided in paragraph (2) of Article 11 of this Law.
Article 14. Amendment of the Register of Trademarks
and Service Marks of the Republic of
Lithuania and of the Registration
Certificate
The holder of a mark shall notify the State Patent Bureau of
the following changes:
1) change in the name or address of the holder;
2) change in the name or address of the representative;
3) change in the representation of the mark as registered,
where the State Patent Bureau considers that the change does not
relate to the distinctive character of the mark;
4) limitation of the list of goods or services; and
5) change, in whole or in part, in the ownership of the
registration.
The State Patent Bureau shall, upon payment of the fee, and
upon submission of any evidence it may require, enter the changes
in the Register of Trademarks and Service Marks of the Republic
of Lithuania and also in the registration certificate.
Chapter 4
Collective Mark
Article 15. Right to a Collective Mark
A union (association) of natural or legal persons or any
other voluntary amalgamation of enterprises shall have the right
to file an application for the registration of a collective mark.
Article 16. Registration and Use of a Collective Mark
All the provisions of this Law, with the exception of
Articles 21 and 22 thereof, shall be applicable to a collective
mark.
The assignment of a collective mark shall be subjected to
the consent of all natural or legal persons which are members of
the union (amalgamation, association, etc.) which holds the
registration of the collective mark.
Chapter 5
Term and Renewal of a Registration
Article 17. Term
The initial term of the registration of a mark shall be 10
years from the filing date of the application.
Article 18. Renewal
The registration of a mark may be renewed for additional
terms no longer than 10 years.
The renewal shall be subjected to the following conditions:
1) the filing of a request for renewal within the last year
of the term of the registration;
2) the payment of the fee; and
3) a request for renewal may be filed up to six months after
the end of the term of a registration, subject to the payment of
a surcharge which shall correspond to 50 per cent of the renewal
fees.
Chapter 6
Rights Conferred by a Registration
Article 19. Scope of Protection
A mark registered in the Republic of Lithuania shall be
protected for the goods or services listed in the registration
certificate.
The extension of the list of goods or services of a
registration may only be made through the filing of a new
application.
Article 20. Rights Conferred by a Registration
The holder of a mark shall have the right to prevent third
parties, from using without his authorization, any sign which:
1) is identical with the mark in respect of the same goods
or services for which it is registered; and
2) is identical with the mark in respect of similar goods or
services, or similar to the mark in respect of the same or
similar goods or services, where there exists a likelihood of
confusion on the part of the public, including the likelihood of
association between the sign and the mark.
At least the following shall constitute using the sign:
1) affixing the sign to goods or to the packaging thereof;
2) offering goods, or putting them on the market for sale,
rental, lending or any other form of distribution, or stocking
goods for these purposes under that sign, or offering or
supplying services thereunder;
3) importing and exporting of goods under the sign;
4) using the sign on business papers or in advertising; and
5) manufacturing and possessing specimens of the sign, with
the intention of doing any of the acts referred to in items 1) to
4), above.
The holder of a registration shall have the right to prevent
third parties from using, without his authorization, in any way
that jeopardizes the distinctive character of the registered
mark, any sign which is identical or similar to the mark.
At least the following uses of a sign shall be considered to
be uses that jeopardize the distinctive character of the mark:
1) using the sign as a trade name or as means of identifying
the premises of an enterprise, where such use would, in view of
the mark and the goods or services for which it is registered, be
likely to mislead the public; and
2) reproducing or referring to the sign in publications or
in any other public media in a way that conveys the impression
that the mark has become the generic name of a particular good or
service.
The holder of a mark which is considered to be well known in
the Republic of Lithuania shall, even if it is not registered
under this Law shall have the right to prevent third parties from
using in commerce, without his authorization, any sign which
constitutes a reproduction, an imitation or a translation of the
mark. The concept of a well known mark shall be established by
the State Patent Bureau.
Paragraphs (3) and (5) of this Article shall not prevent any
person from using:
1) his own name and address;
2) indications concerning the kind, quantity, intended
purpose, value, geographical origin, the time of production of
goods or other characteristics of goods or services;
3) the registered mark of a third party where it is
necessary to indicate the intended purpose of a good or service,
in particular as accessories or spare parts; and
4) the registered mark of a third party in comparative
advertising, where such advertising is permitted, provided that
use is made in accordance with honest practices in industrial or
commercial matters.
Chapter 7
Transfer and Licensing of Marks
Article 21. Transfer of Marks
The rights in a mark may be transferred with or without a
transfer of the business of the assignor.
The transfer of a mark may cover one, several or all the
goods or services to which it is applied, but shall not be the
subject of territorial limitations within the territory of the
Republic of Lithuania.
The transfer of a mark shall have no effect if the transfer
has not been recorded in the Register of Trademarks and Service
Marks of the Republic of Lithuania.
Article 22. Licensing of Marks
A mark may be the subject of an exclusive or non-exclusive
voluntary license by its holder for some or all of goods or
services for which it is registered and for the whole territory
of the Republic of Lithuania.
The license contract shall have no effect if it has not been
recorded in the Register of Trademarks and Service Marks of the
Republic of Lithuania.
Chapter 8
Invalidation and Revocation of a Registration
Article 23. Invalidation of a Registration
Upon request by any interested person, the registration of a
mark may be invalidated by the Court, on the ground that the said
mark does not comply with Articles 2 to 4 this Law.
Where a decision of invalidation is final, the Court shall
accordingly notify the State Patent Bureau, which shall record
the decision in the Register of Trademarks and Service Marks of
the Republic of Lithuania and publish it in the Official
Bulletin.
Article 24. Revocation of a Registration
The registration shall, at the request of any interested
person, be revoked in judicial proceedings if it is established
that either of the following events occurred:
1) the mark has become, in that part of commerce in which
the good or service concerned is traded or supplied, the generic
name for goods or services for which it is registered, as a
result of the treatment of the mark as a generic name by the
holder of the registration; or of the inactivity of the holder of
the registration; or due to such treatment of the mark by others;
and
2) the mark has not been used or has not been the subject of
serious preparations for commencement of use by the holder of the
registration in the territory of the Republic of Lithuania,
without justifying cause, within a period of five years preceding
the date on which the judicial proceedings were commenced.
In determining, for the purposes of item 2) of paragraph (1)
of this Article, whether a mark has been used by the holder of
the registration, the following uses shall be considered to be
use of the mark by such holder in the Republic of Lithuania where
it is registered:
1) use of a sign which differs from the mark as registered
only in a way that does not affect the distinctive character of
the said mark;
2) use by a person other than the holder of the registration
with the consent of the latter; and
3) affixing the mark to the goods or to the packaging
thereof solely for export purposes.
Revocation of a registration on the grounds as provided for
in paragraph (1) of Article 24 shall come into effect from the
date on which the court decision becomes final.
Article 25. Limitations
Where any of the grounds referred to in paragraphs (1) and
(2) of Article 23 or in Article 24 apply to only some of the
goods or services in respect of which the mark is registered, the
registration shall be cancelled only in respect of those goods or
services.
Invalidation or revocation shall not be allowed if the
holder of a prior mark has knowingly tolerated the use during
five years of a later mark which had been the subject of a bona
fide application, except where their coexistence would be liable
to mislead the public or be contrary to public order.
Article 26. Right to Register a Mark Validity of which
is Terminated
Where the validity of a mark is terminated either because of
voluntary abandonment by its holder or lack of renewal, the same
mark may be the subject of a new application in the Republic of
Lithuania:
1) in the name of the former holder of the registration, at
any time after the date on which the said registration ceased to
be in force, unless a new application has been filed in the name
of another person in accordance with item 2) of this Article; and
2) in the name of another person after a period of three
years following the date on which the registration ceased to be
in force.
Chapter 9
Consideration of Disputes. Enforcement of Rights
Article 27. Institutions for Consideration of Disputes
Concerning the Legal Protection of Marks
Disputes regarding the registration and use of marks shall
be dealt with by the following institutions:
1) the Section of Appeals of the State Patent Bureau, in
respect of all disputes relating to the registration of a mark
prior to the issuance of the registration certificate; and
2) by the Supreme Court of the Republic of Lithuania as the
Court of the first instance up to the time of enactment of the
Law on the Establishment of District Courts, the Court of Appeals
and the Supreme Court of the Republic of Lithuania and the
Supplementing of Article 15 of the Court Law of the Republic of
Lithuania; after that, by the Vilnius District court, in respect
of disputes regarding:
decisions of the Section of Appeals of the State Patent
Bureau relating to the refusal to register an application and to
issue a registration certificate;
all matters relating to the invalidation of registration of
marks and certificates granted;
all matters relating to revocation of registration of marks;
andall matters relating to the enforcement of the rights of the
holder of a mark.
Article 28. Enforcement of Rights
According to the claim of the holder of a mark, the Court
may adopt a decision to terminate any acts the performance or the
likely performance of which may infringe the rights conferred by
paragraphs (1) to (5) of Article 20.
The Court, according to the claim of the holder of a mark,
may adopt a decision on the reparation of damages to the holder
of the mark caused by performance of any acts that infringe the
rights conferred by paragraphs (1) to (5) of Article 20.
In addition to the measures specified in paragraphs (1) and
(2) of this Article, the Court may re-establish the situation
that existed before the infringement and to stop infringing
actions, to proceed with an effective seizure of the goods and,
when necessary, to destroy illegally used marks, tools that could
be used to manufacture the goods and the goods themselves in
absence of the possibility to remnove an illegally mark from such
goods.
Article 29. Acts of the Customs to Enforce the Rights
of the Holder of a Registered Mark
The holder of a registered mark or the beneficiary of a
license may request in writing from the customs administration to
withhold goods transported across the border of the Republic of
Lithuania which bear a mark which is considered by the said
holder or beneficiary as infringing their rights in a mark
registered in the Republic of Lithuania. The Customs authorities
shall promptly inform the Public Prosecutor, the holder of a
registerted mark and the person declaring the goods in the
Customs that the said goods have been withheld.
For the purpose of instituting the legal proceedings the
holder of a registered mark or the beneficiary of a licence may
require the Customs administration to communicate the names and
addresses of the sender as well as the quantity of the said
goods.
The withholding of the goods shall be automatically lifted
if the plaintiff fails, within 15 working days from the date of
withholding, to furnish evidence the Customs authorities: either
of the withholding measures decided by the Court or of having
instituted legal proceedings and furnished the securities which
way have been required by the Court to cover possible expenses of
storing such goods.
Article 30. Responsibility of the Holder of a Mark to
Compensate for the Losses Incurred in View
of Groundless Claims
The plaintiff shall be held responsible for compensating the
defendant the losses incurred in view of his groundless claims.
He shall also be held liable to compensate for the expenses of
storing goods that had been groundlessly with held by customs.
If proceedings are satisfied, the defendant shall have to
compensate customs the expenses of storing the goods.
Article 31. Penal Responsibility for Infringement of
the Mark Holder's Rights
Penal responsibility for infringement of the mark holder's
rights shall be as provided for in the relevant laws of the
Republic of Lithuania.
Article 32. Persons Entitled to Enforce
Infringement proceedings shall be instituted by the holder
of the mark. However, the beneficiary of a licence of the mark
may institute infringement proceedings, unless otherwise
stipulated in the licence contract.
Any other party to the licence contract shall have the
opportunity to take part in the court proceedings for
infringement of rights to a trademark instituted by another party
and to receive equitable compensation.
Article 33. Deletion from the Register of Trademarks
and Service Marks of the Republic of
Lithuania
A registration shall be deleted from the Register of
Trademarks and Service Marks of the Republic of Lithuania if:
1) the holder of a mark requests in writing its deletion;
2) the registration of a mark has not been renewed in
accordance with Article 18;
3) it has been declared void pursuant to paragraph (4) of
Article 12; and
4) it has been the subject of revocation following judicial
proceedings.
Chapter 10
International Agreements
Article 34. International Agreements; Rights of
Foreign Legal and Natural Persons
Where international agreements to which the Republic of
Lithuania is a party establish rights which, for an applicant or
a holder of a registration of a mark, are more advantageous than
those provided for in this Law and other legal acts thereof, the
relevant provisions of such international agreements shall apply.
Foreign legal and natural persons shall enjoy all rights
provided for in this Law and other acts regulating the protection
of marks.
Chapter 11
Miscellaneous
Article 35. Provisional Regulations
The rights of persons who, in accordance with the Decree of
the Government of the Republic of Lithuania of 20 May 1992 On the
Legal Protection of Industrial Property in Lithuania, No.362,
filed applications to re-register their USSR trademark and
service mark certificates or certificates granted on the basis of
Madrid Agreement Concerning the International Registration of
Marks and were granted trademark and service mark certificates of
the Republic of Lithuania shall be protected in accordance with
this Law.
Persons who, pursuant to the Decree of the Government of the
Republic of Lithuania of 20 May 1992 On Legal Protection of
Industrial Property in the Republic of Lithuania, No.362, filed
their trademark and service mark applications, shall in
accordance with the provisions stipulated in this Law, have the
right to be granted trademark and service mark certificates.
Priority of such trademarks and service marks shall be
established on the basis of applications duly filed with the
State Patent Bureau.
Persons who, according to the Decree of the Government of
the Republic of Lithuania of 10 April 1991, On the Provisional
Procedure for the Establishment of Quotas and Issuance of
Licenses for Goods and Services which are Exported from the
Republic of Lithuania, No. 128, have filed trade mark or service
mark applications with foreign patent offices, shall have the
right to obtain the priority dates of those foreign applications
if they have deposited copies of those foreign applications with
the State Patent Bureau and shall have the right to register
their marks in accordance with the procedure set forth in this
Law.
Trade marks and service marks registered in the former USSR
shall be regarded as invalid if certificates of such marks are
not re-registered with the State Patent Bureau by 30 September
1993 in accordance with the procedures prescribed by the
Government of the Republic of Lithuania.
Article 36. Entry into Force
The Law on Trademarks and Service Marks shall become
effective on 1 October 1993.
I promulgate this Law adopted by the Seimas of the Republic
of Lithuania.
ALGIRDAS BRAZAUSKAS
President of the Republic
of Lithuania
3 June 1993
Vilnius
No.I-173