Partner, European Patent Attorney
CRUSTUM opposition highlights interplay of trademarks and copyrights
– UAB Gustum opposed the registration of the mark CRUSTUM based on alleged copyright in the sign
– The Appeal Division found that the evidence did not substantiate the creation of a specific work under the copyright agreement
– The condition relating to the existence of prior copyright, which is necessary to apply Article 8(1)(5)(c), was not established
On 13 October 2021 the Appeal Division of the State Patent Bureau of the Republic of Lithuania rejected Opposition No PNZ-843 filed by UAB Gustum (Lithuania) against the registration of the trademark CRUSTUM (Application No 2020 1196) by a natural person, PP (Lithuania).
On 17 July 2020 the applicant applied for the registration of the word-and-device trademark CRUSTUM in Classes 30 and 43.
On 19 November 2020 the opponent filed an opposition based on Article 8(1)(5)(c) of the Law on Trademarks of the Republic of Lithuania, which states that a trademark shall not be registered, or a registered mark shall be declared invalid, if it infringes other earlier rights, including a copyright.
The opponent submitted a copyright agreement concluded on 18 June 2009 between RB (natural person) and MB (personal enterprise) to substantiate its rights in the sign CRUSTUM. The contract stated that the object of the contract was the creation of UAB Crustum’s logo; however, the deed of acceptance and transfer of the work did not specify which logo was transferred to the customer. When assessing this evidence, the Appeal Division noted that it was not possible to deduce what kind of author’s work was created and transferred to MB (personal enterprise) and
how it looked like.
The opponent also submitted a copy of Lithuanian Trademark Registration No 61769 for CRUSTUM, which was valid between 9 October 2009 and 9 October 2019, but had now expired. The Appeal Division stated that this evidence was not related and did not substantiate the creation of a specific work under the copyright agreement, as the customer to which the work was transferred by the agreement and the owner of the trademark did not coincide. The opponent’s argument that the copyrighted work was subsequently registered as a trademark could not therefore be upheld, since no evidence has been adduced to substantiate these circumstances.
The Appeal Division also considered that another piece of evidence – the unilateral confirmation by MB (natural person) that the author’s property rights were transferred to him on 8 January 2020 – could not be considered as sufficient evidence substantiating the circumstances of the dispute. As it was not possible to determine which particular author’s work was the object of the copyright agreement of 18 June 2009, it was not clear the transfer of which work and associated copyrights should be substantiated by that evidence. In addition, a chain of intermediate transfers of copyrights in the Crustum logo from MB (personal enterprise) to MB (natural person) and from MB (natural person) to the opponent was missing.
Paragraph 1 of Article 38 of the Law on Copyright and Related Rights states that the property rights of authors may be transferred by contract, inheritance proceedings and other procedures established by law. Article 42(1) states that a copyright agreement on the transfer of property rights, a copyright licence agreement and a copyright agreement in respect of a work shall be concluded in writing. Here, no such evidence was provided. MB’s unilateral confirmation, which was not based on other reliable and lawful evidence, could not be regarded as sufficient to prove the circumstances of the dispute. Therefore, the interests of the opponent in rights protected by law were not substantiated.
In light of the foregoing, it was concluded that the condition relating to the existence of prior copyright, which is necessary to apply Article 8(1)(5) (c), had not been established. In such circumstances, the assessment of other factors, such as the similarity of the trademark and the copyrighted work, was not legally relevant.
As to the opponent’s allegation that the applicant had bad-faith intentions when filing the trademark application, the Appeal Division recalled that an opposition cannot be based on the ground of bad faith. In order to base an objection on bad faith, an application for invalidation of the registration of a mark must be filed after the mark has been registered in the Register of Trademarks.
The Appeal Division thus considered that the opposition was unfounded and rejected it accordingly.
This article first appeared on WTR Daily, part of World Trademark Review, in 11/2021. For further information, please go to www.worldtrademarkreview.com.