Publication

Traditionally, companies, for one reason or another, seek to avoid litigation as much as possible. This is totally understandable, litigation is time and resource consuming and for the most part, unpredictable. In this regard, to date, there has been no very active litigation practice before the Latvian courts concerning conflicting trademarks.

Nevertheless, it is important for the trademark owners to be aware that the applicable Latvian law restricts their ability to formally act against a competitor’s conflicting trademarks if they do not do so in a timely manner.

The Trade Mark Law provides for a so-called “acquiescence period”, after which the owner of a trademark will no longer be entitled to oppose the registration of a competitor’s trademark that interferes with the owner’s right, as the owner will be deemed to have “acquiesced” with the existence of that trademark. In particular, the Trade Mark Law grants the trademark owner a period of 5 (five) years during which the owner can decide whether to oppose the registration of an identical or confusingly similar trademark.  At the end of this 5 (five)-year period, the trademark owner will have to simply accept the existence of the competing mark.

The statutory limitation period for bringing a trademark infringement action, i.e., bringing an action against a competitor for unlawful use of a trademark (asking the court to prohibit such use), should also be considered. This period is 3 (three) years from the date on which the trademark owner became aware of the infringement.

According to the provisions of the Trade Mark Law, if the owner of an earlier trademark has not contested the use of a later trademark registered in Latvia within 5 (five) consecutive years, even though the owner knew or should have known of such use, the owner is no longer entitled, on the basis of the owner’s earlier rights, to claim the invalidity of the registration of the later trademark, unless the later trademark was applied for in bad faith.

As regards infringement actions, the Trade Mark Law provides that such actions may be brought against the infringer within 3 (three) years from the time at which the owner of the trademark knew or should have known of the unlawful use of the trademark.

Firstly, there is no need to worry about the possible expiry of the acquiescence period in situations whereby a competitor’s trademark has been registered with bad faith (a competitor has registered in its own name a trademark to which it is not essentially entitled). ‘Bad faith’ will be typically found in situations whereby, for example, a trademark created by a company is registered in its own name by an employee or affiliate of the company or by a contractual partner of the company.  ‘Bad faith’ registration is not protected by the law and, accordingly, can be opposed at any time.

Secondly, the timeline for which the competing brand appears in the marketplace should be recorded as accurately as possible. It is important to stress, the Trade Mark Law refers not only to the time of actual “knowledge”, but also to the time when the person “should have known” about the competing mark. Such situations may arise in the absence of any direct contact between the trademark owner and the conflicting trademark. However, the existence of the conflicting trademark could nevertheless not have remained unknown to the owner (e.g., products bearing both trademarks are sold in the same shops, are exhibited at the same trade fairs, etc.).

Thirdly, when confronted with a conflicting brand in the marketplace, carry out a due diligence and confirm whether it is already registered as a trademark. The confirmation can be easily carried out through using publicly accessible databases, access links to which can be found on the website of the Latvian Patent Office https://www.lrpv.gov.lv/lv/precu-zimes/datubazes.

Once the situation is clear, one must decide whether to formally act against the conflicting trademark circulating in the marketplace or wait it out.  Naturally, the launch of a new brand does not necessarily mean that it will be a success and still be around in a few years’ time. In the same vein, a similar brand does not necessarily immediately harm the trademark owner. It is therefore, depending on the situation, possible to wait and see what happens with the new brand, i.e., to postpone taking formal action until a later date – subject to the time limits prescribed under the Trade Mark Law.

It is important to stress, however, that in some cases, immediate action can be much more effective. If the conflicting trademark is found to be recently applied for registration, it is possible to use the relatively simple opposition procedure before the registration authority (the Latvian Patent Office or, in the case of an EU mark, the EU Intellectual Property Office) to prevent the registration of such a mark from being completed at all.

Sometimes, an amicable solution is also possible, where both owners of similar brands agree to co-exist, for example, by defining product categories or market segments for the use of each trademark.

As can be seen, there are a variety of different solutions depending on the specifics of the factual situation, however, it is important to always bear in mind the time limits prescribed under the Trade Mark Law.