Bear Clumsy vs. Bear Clumsy (LĀCĪTIS ĶEPAINĪTIS vs. МИШКА КОСОЛАПЫЙ)
Judgment of the Civil case Collegium of Riga Regional Court in case of appeal lodged by the Russian JSC “Krasny Oktyabr” (Red October) against the ruling of the first court instance regarding the dispute between trademarks “LĀCĪTIS ĶEPAINĪTIS”/ “МИШКА КОСОЛАПЫЙ” (the English translation of both trademarks – “Bear Clumsy”).
Latvian company “Orkla Confectionery and Snacks Latvija”, LLC (hereinafter – the Plaintiff) brought an action before the Riga Regional Court against the Russian JSC “Krasnyj Octyabr” (hereinafter – the Defendant), as well as the Latvian companies “Russian Sweets”, LLC and “Krievijas Saldumi”, LLC (hereinafter – the Codefendants).
The Plaintiff, as the owner of registered and non-registered rights to trademarks “LĀCĪTIS ĶEPAINĪTIS” claimed invalidation of the trademark’s “МИШКА КОСОЛАПЫЙ” (fig.) national registration No. M 66 119, international registration’s No. WO 638 113 designation to Latvia, 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 thereof without the Plaintiff's consent, as well as destruction of the goods bearing the conflicting trade mark. The Defendant, in response, filed a counterclaim.
Lawyer and professional patent attorney Gatis Meržvinskis of Law and Patent Agency “PĒTERSONA PATENTS” represented the interests of the Plaintiff in Court, and the action was won before the first court instance. Defendant filed an appeal against the judgement of the first court instance. On November 8, 2016 the appellate court instance tried the civil case No. C04384713 on the merits, and on November 22 announced a decision.
The appellate court instance found the Plaintiff’s argument, that in the territory of Latvia it has used the unregistered trademarks “LĀCĪTIS ĶEPAINĪTIS” for confectionery goods in good faith and for a length of time, which can be traced further in the past before the registration of Defendant’s trademarks, to be justifiable.
Furthermore, in the opinion of appellate court instance, Plaintiff’s use of trademarks has lasted for a period of time and has been distributed in such a scale to warrant its distinctiveness and be a reason to assume that the Defendant’s use of trademark in Latvia could mislead the consumers with regards to origin of the goods bearing the trademark.
In addition, the second court instance recognized that the unregistered trademarks “LĀCĪTIS ĶEPAINĪTIS” have been historically used throughout Latvia and the Plaintiff has taken over the intellectual property rights on them from their previous users.
Taking into account all of the above, the appellate court instance determined that in this specific case, the existing amount of evidence is adequate and convincing to find that trademarks “LĀCĪTIS ĶEPAINĪTIS”, used by the Plaintiff, can be declared as being well-known in Latvia at the time of their registration. Subsequently, the Court had to completely align its viewpoint with the arguments made by the court of first instance in its judgement, and find them to be correct and completely sufficient. As a result, the Court concluded that the counterclaim by the Defendant is not well-founded and the action brought by the Plaintiff must be upheld.