“Bear Clumsy” vs. “Bear Clumsy”

On August 19, 2013 A/S Laima (hereinafter - the Plaintiff) represented by Mr. Gatis Merzvinskis of the Patent Law Bureau PĒTERSONA PATENTS brought an action before the Riga Regional Court against the Russian company JSC Krasnyj Octyabr (hereinafter - the Defendant) and the Latvian companies Russian Sweets, SIA and Krievijas Saldumi, SIA (hereinafter - Codefendants). The Plaintiff as the owner of registered and non-registered rights to the trademarks "Lācītis Ķepainītis" (the translation of the trademark in English - "Bear Clumsy") claimed invalidation of the international trademark registration No. WO 638 113 "Мишка Косолапый" (fig.) (the translation of this trademark in English is also "Bear Clumsy") in Latvia and the national trademark registration No. M 66 119 "Мишка Косолапый" (fig.), as well as termination and prohibition of unlawful use of the word or graphical trademarks "Lācītis Ķepainītis" or any confusing reproductions, imitations, translations or transliterations of the trademark "Lācītis Ķepainītis" without the Plaintiff's consent with respect to confectionery, including, candies, waffles, waffle cakes, chocolate and chocolate products. Moreover, it was also claimed to destroy all the goods marked with the trademark "Мишка Косолапый" and to oblige to recover the litigation expenses solitarily from the Defendant and Codefendants in favor to the Plaintiff.

 

On November 27, 2014 the Defendant filed a counterclaim against the Plaintiff to invalidate the Plaintiff's trademark registrations No. M 63 834 "Lācītis Ķepainītis" (fig.) and No. M 62 623 "Lācītis Ķepainītis", as well as to prohibit the Plaintiff to sell in Latvia confectionery in a packaging that bears the trademark "Lācītis Ķepainītis". The Defendant also claimed recovery of the litigation expenses.

 

Taking into account the arguments, observations and evidence filed by the parties in this case, the Court acknowledged that the question on the registered and non-registered rights to the trademarks "Lācītis Ķepainītis"/"Мишка Косолапый" shall be based on the chronological and territorial aspects of use of the marks. The Court evaluated the non-registered rights to the trademark "Lācītis Ķepainītis" in successive periods of time, i.e. during the Soviet Union, from the end of the Soviet Union till the registration of the Defendant's trademark, from 1995 till 2004 when the Defendant's international trademark registration was designed to Latvia, from 2004 till the registration dates of the Plaintiff's trademarks in 2010 and 2011, as well as after 2011. 

 

The Court acknowledged that production of the candies with the trademark "Lācītis Ķepainītis" in Latvia was commenced after the end of World War II (in 1945) by the company "Uzvara". The Plaintiff A/S Laima is the asignee of this company and these candies are still produced in Latvia by the Plaintiff. The Plaintiff has used the packaging with the trademark "Lācītis Ķepainītis" in Latvia also during the time period after the end of the Soviet Union till 1995 and the Defendant had never contested the use of this trademark. Since 2004 the Plaintiff continued to use the non-registered trademark "Lācītis Ķepainītis" in the territory of Latvia. Taking into account that the market segment of confectionery products in Latvia is not very big (in comparative to Russia or other big countries) and also basing on the experience, the Court acknowledged that the Defendant knew or at least it had to know that during the time period between 2004 - 2010 A/S Laima used in fair commercial activities the non-registered trademark "Lācītis Ķepainītis". According to the judgement of February 8, 2013 of the Riga Regional Court in the civil case No. C04165612, the international trademark registration No. WO 638 113 "Мишка Косолапый" (fig.) of the Defendant was already revoked in Latvia due to its non-use. 

 

The Court admitted that the non-registered trademark "Lācītis Ķepainītis" is a well-known trademark in Latvia. Analyzing whether the Defendant had applied its trademarks which are translations and a graphical imitations of the word and graphical trademarks "Lācītis Ķepainītis" in bad faith, the Court agreed that the Defendant knew or it had to know that the Plaintiff had rights to the well-known trademarks "Lācītis Ķepainītis" which are confusingly similar to the Defendant's trademarks. Taking into account these circumstances, the Court agreed that the Defendant had acted in a bad faith. 

 

Consequently, the Court decided to fully satisfy the claim and reject the Defendant's counterclaim.