Author: Inga Lukauskiene, Associated Partner, Attorney-at-Law, Patent Attorney, Court Mediator
You could find many examples when the same words function as both a company name and a trademark for services or goods (e.g. Coca-Cola or McDonalds). In fact, it is not forbidden to use company’s name in the trademark. On the contrary, this will make a user remember well not only the goods or services, but also their manufacturers or providers. However, you should be aware that the co-existence of similar company names does not ensure the co-existence of similar trademarks in the market.
Company’s name or its part does not need to be included into the trademark, i.e. there are no such restrictions. But, despite the existence of numerous ways to think of interesting and significant trademarks, it appears that companies with similar names tend to register similar trademarks. This sometimes leads to serious battles.
For example, Vilnius County Court analysed an appeal lodged by Alliance Unichem IP Limited concerning the decision of the State Patent Bureau of the Republic of Lithuania (SPB). Under SPB’s judgement, the registration of plaintiff’s trademark ALLIANCE HEALTHCARE was declared invalid due to its similarity to trademarks ALLIANCE and ALLIANE GENERICS that belonged to Alliance Pharmaceuticals Limited.
The court rejected plaintiff’s arguments that ALLIANCE, a verbal element, had a weak distinctive character and that visual elements were important too. Although the plaintiff stated that there were a lot of registered trademarks with word alliance, the court followed the practice of the Office for the Harmonization in the Internal Market (OHIM) and argued that the number of trademarks did not prove that the use of this word was normal in the market. Besides, defendant’s word trademark ALLIANCE had been registered as a Community trademark and its registration was valid showing that the trademark definitely had a distinctive character.
The court was also not convinced with plaintiff’s arguments in relation to the importance of graphic elements. Firstly, the plaintiff itself differently described the graphic element included into its trademark. On the other hand, the graphic elements in the compared trademarks did not consist of clearly identified drawings bearing a specific semantic meaning, therefore, they were only decorative elements. Other word elements found in trademarks, i.e. GENERICS and HEALTHCARE, are explicitly descriptive in light of pharmaceutical products and health related services. Hence, the plaintiff did not even argue against such reasoning.
Taking into account that both goods and services labelled with compared trademarks were considered to be similar, Vilnius County Court upheld SPB’s decision.
In fact, the dispute between these parties has arisen in other countries too. Like Lithuania, Sweden in its final decision declared plaintiff’s trademark registration invalid. Thus, it is good to know that Lithuanian case law being in line with the case law of the OHIM and the European Court of Justice has the same views towards this matter.
Thus, the destiny of this case shows that the co-existence of similar company names does not guarantee the possibility of the existence of similar trademarks in the market. Thereby, when creating the trademark, you should always take this into account in order to avoid the worst scenario, i.e. disputes at courts or the need to change your trademark.