Opposition against SPICE No. M 72 284 – a trademark of GRIGORIUS HOLDINGS
PĒTERSONA PATENTS – AAA LAW has successfully represented interests of the Latvian company TIRDZNIECĪBAS CENTRS PLESKODLE, SIA in opposition proceedings before the Industrial Property Board of Appeal of the Republic of Latvia. The company operates a shopping mall “Spice” which is one of the biggest of its kind in Latvia. Likewise it is a proprietor of several registered word and figurative marks for “SPICE” in Latvia.
The opposition was directed against a word mark “SPICE” in the name of GRIGORIUS HOLDINGS, SIA, a business entity linked with the infamous trademark troll Michael Gleissner.
In one part the opposition relied on grounds of likelihood of confusion between the contested trademark and opponent’s marks. However, the contested mark covered different classes of goods and services from opponent’s marks, therefore it was necessary to additionally rely upon the ground of “SPICE” being well-known in Latvia, to successfully oppose the entire contested registration.
As a result, it was firstly required to prove that “SPICE” had become well-known in Latvia with respect to identical or similar goods or services and that the contested registration, being an imitation of “SPICE”, is liable to confuse consumers. This was demonstrated by evidence on investments and extent of marketing activities undertaken by the opponent.
Secondly, it had to be shown that consumers may perceive use of those goods and services which were covered by the contested registration, but not by prior rights to be indicative of a connection between them and the opponent and that such connection serves to be detrimental to opponent’s interests. Considering that “SPICE” has been actively marketed locally, it was demonstrated that consumers may associate with the well-known mark even those goods and services that are not covered by opponent’s marks but are available to them in the shopping mall “Spice”, resulting in detriment to opponent’s interests by possible dilution of well-known mark.
Thus the mark “SPICE”, which by itself has a high acquired distinctiveness, as a well-known mark in Latvia, is entitled to the widest protection affordable. Moreover, taking note of the aforementioned opponent’s considerations it was also argued that the applicant could not be unaware of the opponent who is the proprietor of an identical mark, thus serving as a basis for proving that applicant had acted in bad-faith when registering the contested mark.