Author: Daiva Bukniene, METIDA Senior Trademark and Design Consultant, Foreign affairs coordinator
1. Study the landscape thoroughly
As often as no, Lithuanian trademark owners tend to adopt a careless approach to preparing for trademark registration. That the owner comes up with an appealing trademark and designs its image does not mean that they will be able to relax once documents are filed for registration. One should evaluate two criteria, that is whether the trademark complies with absolutely all requirements (it is not amoral or descriptive), and conduct a thorough search for the trademark, getting to know the risks relevant to previous trademarks that could create the key impediment for a successful registration.
2. Assess the risks
Currently, anyone can access trademark databases to check whether any identical or similar trademarks already exist – that is not difficult to do. Unfortunately, trademark owners are nonetheless receiving justified objections regarding trademarks that have been registered before and did not appear similar at a glance. Could trademark owners have possibly avoided this? Another fallacy is to believe the State Patent Bureau has considered all potential obstacles when it passes a decision to register a trademark. The state patent bureaus of some countries, such as Estonia and Russia, perform a full expertise, evaluating the absolute and the relative requirements (the latter including the new trademark’s similarity to marks that have been registered before). However, when it comes to Lithuania, potential trademark disputes must be predicted and assessed before the application is filed. This requires a lot of experience and knowledge of the latest practice of dispute resolution. It is not very nice when a trademark is introduced to the market, a lot of money is invested in promoting the product or service, and some objection is filed to simply go and turn everything upside down.
3. Discuss the right registration tactic
The risks would be significantly reduced if, at the stage of searching for the trademark, the owner entrusted the trademark search and assessment to experienced lawyers who would synthesise the word that involves the lowest amount of risk, arrange the whole picture correctly, and prepare to file an application. This is the usual practice for large multinational companies that, in doing so, avoid exposure to trademark cancellation.
4. Do not leave your trademark unattended
When the trademark is registered and a registration certificate is obtained, the owner might seem to already be in luck. But the city can sleep in peace not when it is built, but when it has someone protecting it. New trademarks are registered and their owners must see to it that no registration is granted to those who are or will be in direct competition with them on the market. To that end, one must continuously monitor the registers of trademarks valid in Lithuania, evaluate identical or misleadingly similar trademarks, and file objections on time. It is a rather complicated and consistent kind of work, therefore by trusting it to professionals the owners can rest assured and be at peace, investing their time into the development of their company, business, trademark.