Changes Foreseen by Implementation of TM Directive in Lithuania

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1 Changes Foreseen by Implementation of TM Directive in Lithuania Lina Mickienė Deputy Director of the State Patent Bureau of the Republic of Lithuania December 8, 2016 Riga

2 Structure of the presentation Lithuania and its IP system State Patent Bureau activities Lithuania within the EU trademark system Review of the Directive implementation into Lithuanian laws Cooperation with the EUIPO 2

3 Lithuania one of three Baltic tigers Re-established independence in March 11, 1990 Population on January 1, 2016 GDP ,8 mln. euro, per person euro (I Q, 2016) Salary average euro (IIIQ, 2016) Unemployment - 8% (IIIQ, 2016) External EU border (Russia, Belorussia) 972 km 3

4 Most important historical moments for Lithuania in international IP area 1992 joining the WIPO 1994 extension of European patents (agreement with the EPO) 2001 joining the WTO 2004 joining the EU 2004 joining the EPO and joining the UPC Accession to the OECD is in the process 4

5 European Innovation Scoreboard

6 Global Competitiveness Index (GCI)

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8 State Patent Bureau: facts and figures Established in 1991 by Government order Executive body of the Republic of Lithuania, public administration institution under supervision of Ministry of Justice State budgetary organization Special industrial property laws - Law on Trademarks, Law on Designs, Patent Law, Law on Legal Protection of Topographies of Semiconductor Products, Law on Fees for registration of industrial property objects Public information about SPB activities, administrative procedures, one-desk information, FAQ, databases on webpage 8

9 Staff of the SPB 65 employees (max allowed 68) - 42 civil servants and 23 employed under the employment contracts Trademarks and designs division - 15 employees (7 examiners + Head of Examination Subdivision) Application receiving and document management division - 7 employees Appeals division - 3 employees IT division 5 employees (1,5 for TM and Designs registers) One TM examiner and one IT specialist working as national experts at EUIPO 9

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11 Lithuania as part of the EU trademarks system TM can be protected in Lithuania via: National way (Law on Trademarks was introduced in 1993, re-registration of Soviet Union TMs was foressen) Regional way (EU since 2004) International way (Madrid protocol since 1997) national TM applications were received, TM were registered during the period international TM registrations were extended, protection was granted for TM during the period TM registrations (granted by national or international were) were valid at the end of

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13 TM registration procedure in Lithuania Post grant procedure Not substantive examination E-filing (50% of applications) available since September 2014 Examination time ~ 5,5 month (from date of filling until first action of TM examiner) 6 TM examiners, ~ 700 applications by one examiner per year Administrative procedure for oppositions and appeals (140 oppositions are already received this year) Judicial procedure for invalidation and cancellation after the grant (10-20 TM cases per year) 13

14 Lithuania and EU trademarks Lithuanians are not very active users of EUTM system The one millionth CTM application was filed in October 2011 by Lithuanian company Valentis Year Applied CTM/EUTM Registered (I-IIIQ)

15 EU trademarks legislative reform: fact and figures Took 18 months - from March 27, 2013 until December 24, 2015 Directive (40 pages, 57 Art.),CTM Regulation (55 pages, 127 amendments) 6 EU Council Presidencies were in charge Ireland, Lithuania, Greece, Italy, Latvia, Luxembourg During Lithuanian Presidency 11 working parties (13 working days) were organized Hundred of different level meetings were organized Council working parties, attaché level, Coreper I, Competitiveness Council, trialog with European Parliament meetings + meetings with NGOs Active role of NGOs, informal Member States group Friends of Trademarks 15

16 The main debates were concentrated on Political institutional changes - EUIPO financial independence Management changes Delegated act Legal changes: Definition of trademarks, classification, geographical indications, garantee and sertification marks, one class fee, goods in tranzit, obligatory administrative procedure for invalidation and cancellations Administrative financial changes: facilitating cooperation between OHIM and national industrial property offices balancing of OHIM budget financial mechanizm for cooperation 16

17 How those changes will effect Lithuania? Directive should be implemented on January 14, 2019 and mandatory administrative disputes procedure before January 14, 2023 SPB is responsible for the drafting of all acts implementing TM Directive under the supervision of Ministry of Justice Indicative time table 2016 internal drafting, 2017 interinstitutional, governmental discussions and deliberation, adoption before July 1, 2018 Main changes: Material law Procedural questions Legitimization of cooperation with the EUIPO and other Member States

18 Main changes of the TM definition, adjustment of absolute and relative grounds TM definition (Art. 3) Need to introduce new concept of TM definition Gis (Art. 4 (1)(h)- (k), Art. 5(3)(c) Plant varieties (Art. 4(1) (l) Grounds on GI, designation of origin, traditional terms for wine, traditional specialties, protection should be broaden protection should be itemized Lithuania has not tradition of strong GIs protection Absolute ground One of relatives grounds at the meantime in Lithuania (as industrial property right) Bad faith (Art.4(2) Existing relative ground in Lithuania, oppositions can be based 18

19 Changes related to material law Not registered TM (Art 5(4)(a) Not mandatory ground, discussions on need to have it due to lack of practice Foreign TM (Art 5(4)(c) Not mandatory ground, discussions on need to have it due to lack of practice Lack of distinctive character or of reputation (Art 8) One of relatives grounds at the meantime, should be detailed Acquiescence (Art 9(3) New ground 19

20 Main changes related to TM owners rights Packaging (Art. 11) Existing provision should be detailed Trade names (Art. 10(3)(d) Existing provision, but now limited to similar activities of the competitor Reproduction in dictionaries (Art. 12) Exisiting provision, but e-format is not mentioned in the existing legislation Goods in transit (Art. 10(4) New and important, because Lithuania is responsible for outside EU border (1000 km) Non-use as defence (Art. 17), intervening right (Art. 18) New provisions to be introduced 20

21 Changes related to procedures Classification of goods before IPtranslator case use of class headings was allowed. Thorough implementation of Art 39 with transitional period Administrative procedure for appeals and oppositions has already been introduced since 1993 NEW - Pre-grant opposition procedure: opposition of application (not of registration), non use of trademarks in the oppositions procedure NEW Administrative procedure for invalidation and cancellation after the registration will be introduced at the same time Renewal unofficial warning about the deadline is used, a request for renewal with payment is required at the meantime 1 class fee has already been introduced since Nevertheless, fees system will be reviewed Intention to implement third parties observation system 21

22 Other procedural and not procedural provisions Communication with the office communication address in Lithuania is required at the moment Some provisions related to TM as object of property should be detailed (levy of execution) Discussions on a need to have special regulation for guarantee or certification marks no practice Detailed provisions on refusal of an application, invalidation of collective marks should be introduced Special provisions on data protection should be introduced Mediation? 22

23 Cooperation between Lithuania and EUIPO The offices shall be free to cooperate effectively with each other and with the European Union Intellectual Property Office in order to promote convergence of practices and tools in relation to the examination and registration of trade marks and in all areas of their activities which are of relevance for the protection of trade marks in the Union. Cooperation started in 2004 on experts and management level Every year about 6 Lithuanian judges are trained in EUIPO seminars for judges, also prosecutors, other enforcement officers (police, custom officers) First bilateral technical cooperation agreement between SPB and EUIPO was signed in 2010 Since 2010 participation in Cooperation fund projects 23

24 TMview Convergence Programme ( ) Seniority Common Gateway Designview Quality Survey Satisfaction E - learning CESTO Observatory Programme Case Law Software package (e - filing TM, e - filing DS, e - services) 2015 Software package (Backoffice - LINRA) Forecasting Call Center Anti - Counterfeiting Intelligence Support Tool Enforcement Database

25 European Cooperation projects (ECP) priorities ECP5 PM Certification for IPOs, pilot project ECP 2 MAJOR IMPROVEMENTS TO EXISTING CF TOOLS (Back Office, Front Office and etc.) 2017 ECP4 Collaborative Network Language Check option, pilot project ECP5 Support to Management Systems for IP Offices, pilot project ECP5 Capture and Store Historical Files 2018 ECP3 NEW TOOLS ECP4 SHARED SERVICES AND PRACTICES ECP5 SUPPORTING THE NETWORK Deployed Project Managers and technical support 25

26 Cooperation on promotion of CTM/EUTM and RCD systems under bilateral agreement First bilateral technical cooperation agreement between SPB and OHIM was signed in 2010 Main activities performed every year: Seminars on promotion of CTM/EUTM or RCD 8 seminars Round table discussions in different regions of country in cooperation with Chambers of industry, commerce and crafts 21 discussions Training seminars for judges outside Vilnius 3 seminars Dissemination of information on CTM/EUTM and RCD through one desk service, phone calls, website, consultations 26

27 Other interesting activities under bilateral agreement Training materials compendiums of EU and national laws, main EUCJ and national court decisions on TM and Designs protection Leaflets and brochures about CTM, RCD, protection of TM and designs in the EU, TMview, Designview, TM and design e-filing, ETMDN Contest Design your gate to commercial success Promotional videos about TMview, Designview, TM and design e-filing Regional conference Intellectual property protection in the EU: risks, challenges and prospects on the occasion of the Lithuanian Presidency of the EU Council in 2013 Regional conference Intellectual property and sport was held in Vilnius on April

28 Main challenges and problems of cooperation, promotion of EUTM system Limited human resources Budgetary constraints Poor interest of users in the regions Impartiality issues in organization of trainings for judges Reach and attract of the right audience Education and dissemination of information among universities and schools 28

29 Our videos: If you would like to know more about... TMview search tool in Lithuania How to register Design in Lithuania Our leaflets: Those videos and other materials created under bilateral cooperation can be found on our website: 29

30 Thank you for your attention Lina Mickienė Deputy director State Patent Bureau of the Republic of Lithuania Tel lina.mickiene@vpb.gov.lt 30