Likelihood of confusion for trademarks is one of the most frequent reasons for trademark disputes due to the variety of similar and identical trademarks that are being registered. Nowadays, trademarks, their registration and protection in Latvia is mainly governed by the Law On Trade Marks and Indications of Geographical Origin (hereinafter referred to as LPZ/99), which came into force in 1999.
Rights of the owner of a registered trademark
As determined in the Section 4, Paragraph 6 of LPZ/99 the owner of the registered trademark has exclusive right of prohibition for others to use the signs in commercial activities, such as the ones that are identical to already registered trade mark and in conjunction with its goods and services. Furthermore, also signs that can result a likelihood of confusion or association between the questionable sign and already registered trademark or between the goods and services of the sign and trade mark can be prohibited by the owner of the registered trade mark.
Apart from the above-mentioned rights Paragraph 7 of the Section 4 of LPZ/99 also determines that in case of the well-known trade mark in Latvia the owner may also prohibit any use of a sign in commercial activities, “which constitutes a reproduction, an imitation, a translation or a transliteration, liable to create confusion, of the well-known mark in relation to goods or services which are identical or similar to the goods or services covered by a well-known trademark.” Moreover, even if the goods and services of that sign are not similar to the ones of the well-known trademark but there is a possibility for the consumers to recognize the connection to the well-known trade mark, the sign in question also can be prohibited in order to protect the interests of the owner of such trade mark.
Likelihood of confusion for trademarks
Likelihood of confusion for trademarks is a principle, which describes whether two trademarks can co-exist without damaging the reputation and interests of the trade mark that has already been registered earlier. If it is a case, due to this principle there has been established an opportunity to avoid the registration of a new identical or similar trade mark or declare the newer trademark invalid if it has already been registered.
Section 7 of the LPZ/99 deals with such cases as it determines the possibility for the already registered trademark to be as a basis for declaring the new trademark non-existent. Paragraph 1 of Section 7 of the LPZ/99 determines that the new trademark’s registration can be declared invalid if:
- “it is identical to an earlier trademark, and the goods or services in respect of which the trademark was registered are identical to the goods or services in respect of which the earlier trade mark was registered;
- in connection with its identity or similarity to, an earlier trademark belonging to another person and the identity or similarity of the respective goods or services, there exists a likelihood of confusion of the trademarks or a likelihood of association between the trademarks on behalf of the relevant consumers.”
Accordingly, if the trademark that is being registered is identical or there is any possibility of confusion or association with the trademark that has been established and registered earlier and, thus could leave negative influence on the previous trademark, its reputation or owners interests, the newer trademark could not be registered or could be declared no longer existent if it has been already registered.
Nevertheless, there are no specific criteria under Latvian law on how to evaluate and determine whether the trademarks are identical or similar. This is due to the reason that there are no specific criteria that would be appropriate for all evaluation cases and trade marks and the question of determining the similarity should be done on case-by-case basis while examining all types of aspects, whether specific or general, in the concrete case. The evaluation of all types, whether visual, phonetical or conceptual, is necessary in order to determine if the similarity between trademarks in question exists. What is more, not only the trademarks as such have to be evaluated but also the goods and services for which both trademarks of comparison have been registered in order to determine the possibility of identical or similar character of trademarks and thus basis of invalidation of the trademark. For this reason the International Classification of Goods and Services (Nice Classification) is being used.
Additionally, the Patent Office of the Republic of Latvia has established several questions that have to be answered in order to determine if the likelihood of confusion exists. For example:
- Which of the trademarks has a priority?
- Whether the trademarks in question are identical or similar?
- Whether the goods and services of both trademarks of comparison are identical or similar?
- Whether the trademarks and goods and services of comparison might be considered as interrelated and result in a likelihood of confusion or association by the society due to their similarity?
These questions have to be answered by taking into account several aspects, specific or general, of trademark comparison on a case-by-case basis in order to determine whether the likelihood of confusion for trademarks exist.
Well-known trademarks in Latvia
As mentioned above there is a possibility of denying the registration of a new trademark or declare the trademark as non-existent if it has already been registered also in a case where the similarity with well-known trademark is being discovered. In a case where such similarity is being questioned, the well-known trademark can be registered as well as without registration. As it is determined in the Section 8 of the LPZ/99 the registration of a trademark can be denied or invalidated if “the trade mark constitutes a reproduction, an imitation, a translation or a transliteration, liable to create confusion, of another trade mark, which, even though unregistered, was well-known in Latvia with respect to identical or similar goods or services.”
Moreover, even if the sign in question is not identical or similar to the well-known trademark or its goods and services, the registration still can be denied or invalidated if in any way this sign in question can constitute a connection with a well-known trade mark and negatively influence its reputation or its owner’s interests. The basis for such evaluation and application of such rules of a well-known trademark can be found in the provisions of the 6-bis Paris Convention for the Protection of Industrial Property, which forbids the imitation or reproduction of a well-known trade mark in another sign or trade mark. Nevertheless, if the owner of a well-known trademark approves the registered sign in question, the Section 8 of the LPZ/99 is no longer applicable and the sign officially can be registered as a trademark.
Appeal and opposition to the registration of a trademark that constitutes a likelihood of confusion or association
As discussed previously there is a possibility to challenge the trade marks that are in the registration process or have already been registered. According to the Section 171 of the LPZ/99 the decision of the Patent Office of the Republic of Latvia can be challenged by submitting the appeal in order to seek a repeated evaluation of a trademark/sign in question.
After the registration of a trademark the opposition to the registration of such trade mark can be brought within 3 months after the publication date of that trade mark as determined in the Section 18(1) of the LPZ/99. In case where the reason for the opposition is a likelihood of confusion or association for trade marks or the similarities with a well-known trademark, the opposition may be brought by the owners (or their representatives) of earlier trade marks or well-known trade marks. In addition, in cases of well-known trade marks the opposition also may be filed by “filed by professional associations and associations of manufacturers, traders and providers of services, whose articles of association provide for the protection of the economic interests of their associates (members), as well as by organizations and authorities, whose purpose, under their articles of association, is the protection of the rights of consumers”, as determined in the Section 18(4) of the LPZ/99.