Case number: C04454310 (PAC-0188/2013)
Court: The Chamber of Civil Cases of the Supreme Court of the Republic of Latvia
Parties: Russian company „Akva-Laif” v. /person F/
Date: 10 September 2013
IP RIGHT(S) Trade marks
NORMS Arts 3, 4(6), 4(10), 6(1)(1)-6(1)(4), 6(2), 24(3), 31(1) Latvian Law on Trade Marks and Indications of Geographical Origin (1999).
The claimant brought a claim to the court in 2010, requesting a word trade mark „SITRO” to be declared invalid. This trade mark had been registered for non-alcoholic beverages as a property of /person F/ in Latvia on 20 November 2002.
The main grounds for the invalidity claim was the claimant’s opinion that the sign „SITRO” had lost its distinctive character and had become a descriptive (generic) term.
The claimant indicated that a beverage marked with a name „SITRO” was a traditional non-alcoholic carbonated beverage that consisted of citrus fruit essence, sugar and citric acid. A non-alcoholic beverage marked with this sign was produced and was popular at the times of the Union of Soviet Socialist Republics (USSR). In 60ies and 70ies it was manufactured in several factories in the Latvian Soviet Socialist Republic (LSSR), too. Non-alcoholic beverage „SITRO” was included in the 1957 USSR register of non-alcoholic beverages and in the 1973 and 1983 USSR recipe book of non-alcoholic beverages. Such non-alcoholic beverage is still being produced in the former republics of the USSR – in Russia, Ukraine, Georgia, Belarus, as well as in Latvia.
DAMAGES AWARDED -
The case concerns the issue of the factors that have to be considered in order to establish that a sign has lost its distinctive character and has become a descriptive or a generic term.
The Court ruled that the claimant had to prove his allegation that the sign had lost the distinctive character and had become generic, but the claimant had not fulfilled this duty.
Firstly, according to the principle of territoriality, characteristic to the trade mark registration, the national registration of a trade mark in one country is applicable to the territory of this country and to the public of this country. A sign can be generic or descriptive for the inhabitants of one country, but without any meaning for the inhabitants of another country. It means that the sign „SITRO” has to be a generic term or a descriptive term for a non-alcoholic beverage with citrus taste in Latvia, for the Latvian public. Therefore the claimant may not prove his claim with evidence regarding Russia, Ukraine, Georgia, Belarus or any other countries.
Secondly, the present-day meaning for the public of the word „SITRO” should be considered – how the Latvian public perceived this word on the date of filing of the trade mark application (on 22 August 2001) and how it perceives it now. Therefore the claimant may not prove his claim with evidence regarding the former USSR, including the former LSSR, because the USSR does not exist any longer and Latvia has not been its part for more than 20 years. The factories, which had been manufacturing the beverage „SITRO” from 1956 till 1990 in LSSR, do not exist and do not produce beverages under the name „SITRO”. A new generation has grown up since then, and this generation is not familiar with the produce of Soviet times. This new generation (children, teenagers and youth) are the main consumers for non-alcoholic carbonated beverages and they do not associate the names of beverages produced in the Soviet times with a particular beverage.
Regarding the territory of Latvia and regarding nowadays the Court found that the claimant had not submitted sufficient evidence. The submitted evidence did not even prove a fact that the public was familiar with a beverage „SITRO” at all.
Therefore the Court concluded that the claimant had not proved his allegation that the sign „SITRO” is a generic term that describes non-alcoholic beverages with a citrus taste.
This case portrays a peculiarity characteristic to Latvia – due to the transformation from the command economy of the USSR to the free trade economy disputes arise among producers from the countries that formed the former USSR. The judgment stresses the necessity to take into consideration the burden of proof, the principle of territoriality, the relevant public and its perception of signs nowadays.
Courts have followed this judgment in several other cases (f.ex. the judgment of the Chamber of Civil Cases of the Supreme Court of Latvia of 26 September 2013 in the case No C04514910, the judgment of the Collegium of Civil Cases of Riga Regional Court of 2 March 2015 in the case No C04169713).