Publication

In March this year, the final ruling in the almost eight-year long trademark dispute between Air Baltic Corporation AS and SIA Baltic Taxi, over the trademarks Baltic Taxi[1], entered into force. The Latvian Supreme Court’s judgement in this case expressed several important conclusions which are likely to be cited in future trademark disputes.[2] Among others, the Latvian Supreme Court’s conclusions also relate to the concept of a “family” or “series” of trademarks, which is rarely analysed under Latvian case-law.

In this regard, the general questions raised are: (i) what is a “family” of trademarks and how does it differ from an ordinary trademark registration; and (ii) what is the relevance for disputes in uncovering the existence of a family of trademark?

As you may already be aware, trademarks can only be registered individually. A trademark consists of a specific sign (e.g., word, figurative logo, etc.) and this sign is registered as a trademark with its own individual registration number. Often, trademark proprietors, especially those working simultaneously in different sectors or with different classes of goods, own several trademarks. If such trademarks are created using a common design and/or the same elements, the existence of a trademark family may be established. However, it is not possible to register a family of trademarks in the Register of Trademarks. Such concept is not defined under the Latvian Trademark Law and thus the existence of a family of trademarks is a question of fact, which, in the event of a dispute, must be proven by the person claiming it.

The European Union Intellectual Property Office guidelines explain that in order to be considered as belonging to a family of trademarks, all the trademarks must contain a common element (component) which must be identical or at least very similar in all the trademarks. Slight graphic differences in the common element do not preclude the conclusion that a family of trademarks exists, provided the public could regard the differences as a modern way of presenting the same product line.[3]

For example, in the Baltic Taxi trademark case, the court upheld that the common element of the applicant’s family of trademarks was the word “Baltic” combined with descriptive signs (Bike, Miles, etc.), and that the trademarks of the family of trademarks had a uniform style, colour combination and layout. In the dispute concerning the trademark Rocher, on the other hand, the Latvian Supreme Court held the mark FERRERO is the unifying and common element of the family of trademarks and indicates the goods originate from a single undertaking.[4]

In the case-law, the concept of a family of trademarks has been developed in the context of the comparison of trademarks and the assessment of the “likelihood of confusion”. Traditionally, in opposition or invalidity proceedings against a later trademark registration, the trademark is compared visually, semantically and phonetically with the earlier trademark in order to determine whether there is a likelihood of causing confusion or interconnection between the trademarks[5] by the relevant consumers. The proprietor of the earlier trademark is thus afforded protection against imitations of his trademark or mere confusingly similar later trademarks of others.

However, when earlier trademarks form a family of trademarks, in addition to the usual comparison test, additional considerations to be taken into account are to be found in case-law.

Within the existing case-law of the Court of Justice of the European Union (CJEU), Bridge v Bainbridge is considered a landmark case on the concept of a family of trademarks, in which it was upheld that a family of trademarks consisted of several trademarks with the common word element “bridge”.[6] The CJEU emphasised a trademark can only be registered individually and the resulting protections granted individually, even where several trademarks having a common element are registered at the same time. Nevertheless, the CJEU upheld where there is an earlier family of trademarks, it cannot be limited to a mere comparison between the earlier and later trademarks (comparing the trademarks only in the form in which they are registered), one must also take into account the risk and assess whether consumers may mistakenly believe the later trademark forms part of an existing family of trademarks.[7]

In particular, if the later trademark is based upon the same principles as the company’s trademarks from an existing family of trademarks, consumers encountering such a similar later trademark may perceive it as a “continuation” of the family of trademarks and mistake the goods for coming from the same company as the family of trademarks. As a result of such a misperception by consumers, the holder of a later trademark may benefit and facilitate the market entry of its goods. Thus, in Citigate, the General Court underlined the existence of the CITI family of trademarks increased the risk that the applicant’s trademark “CITIGATE” would exploit the reputation of the trademark “CITIBANK” and the public at large may decide to use the applicant’s services, believing (or understanding) the applicant’s trademark is related to the well-known trademark “CITIBANK”.[8]

It is therefore not sufficient for consumers to have the ‘impression’ a sign is linked to an existing family of trademarks merely because the trademarks in the family are registered. In addition, the family of trademarks must also be used in the market where consumers can see and perceive the trademarks as a family, i.e., as evidence of the origin of the goods or services from the same company.[9] Accordingly, the proprietor of a family of trademarks must provide evidence the trademarks forming the family are being used.[10] The level of proof does not need evidence a particularly high degree of recognition of the family of trademarks on the market (reputation or well-known status).

The Latvian Supreme Court, in the Baltic Taxi trademark case, has established the following set of clear criteria and procedures for assessing the risk of causing confusion in cases where there is a family of trademarks:

• the common element of the trademarks in the family must be identified and its distinctive character assessed (if the element is descriptive, it is not suitable to create the likelihood of confusion);
• an assessment of each of the contested trademarks against the family of trademarks; and
• examine whether the contested trademarks have such characteristics as to link them, giving consumers the false impression that the contested trademarks belong to an existing family of trademarks.[11]

Admittedly, a finding of a “consumers’ false impression” will rarely be based upon direct evidence provided by consumers (as was found in the Baltic Taxi trademark case, where the consumer complaints received were clear evidence of a real-life misconception). Therefore the proprietor of a family of trademarks must be able to provide clear evidence of the use of the trademarks which demonstrates the existence of the family of trademarks on the market and their recognition by consumers.

In summary, the creation of a family of trademarks may confer certain advantages upon the trademark proprietor by providing a broader scope of protection for its trademarks, i.e., protection also against later trademarks which, even if not confusingly similar in themselves, may nevertheless evoke associations with the family of trademarks as a whole.

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[1] Please refer to the Riga Regional Court Judgement of 24 May 2024 in Case No. C3759916.

[2] Please refer to the Supreme Court Judgement of 19 December 2022 in Case No. SKC-7/2022.

[3] Please refer to the European Union trademark guidelines, part C “Opposition”, Section 6, available at: https://guidelines.euipo.europa.eu/2214311/1789608/trade-mark-guidelines/chapter-6-other-factors.

[4] Please refer to the Supreme Court Department of Civil Cases Judgement of 31 May 2016 in the Case No. SKC-19/2016.

[5] Please refer to the Trademark Law at Section 7, first paragraph, clause 2.

[6] Please refer to Court of Justice of the European Union Judgement of 13 September 2007 in Case No. C-234/06 P Il Ponte Finanziaria SpA..

[7] Ibid., at Clauses 62. and 63.

[8] Please refer to General Court Judgement of 26 September 2012 in the Case T-301/09 IG Communications Ltd clause 122.

[9] Please refer to Court of Justice of the European Union Judgement of 13 September 2007 in Case No. C-234/06 P Il Ponte Finanziaria SpA, clause 64.

[10] Please refer to European Union trademark guidelines, part C “Opposition”, Section 6, available on: https://guidelines.euipo.europa.eu/2214311/1789608/trade-mark-guidelines/chapter-6-other-factors.

[11] Please refer to the Latvian Supreme Court Judgement of 19 December 2022 in the Case No. SKC-7/2022, clause 11.2.2.