Neregistruoto prekės ženklo gynimas

Summary Universal globalization is best of all reflected by trademark spread. Trademarks are autonomous objects of agreements. Unregistered trademarks are characterized with high integrity as object of economic turnover; they quite easily spread over the boundaries of state jurisdiction. Unregistered trademark can not be protected by common legal means used in cases of registered trademarks. The fact that trademark is unregistered creates specificity in its protection, as parties are forced to use other grounds than rights of ownership created by the registered trademark. This paper analyses hypothesis that different size of material rights is owned by the user of a mark, owner of trademark application and owner of well-known trademark in each separate case and accordingly, the specificity of protection of interests of unregistered trademark depend upon it. Although the law does not cover agreements on trademark applications, however these agreements are not contradicting the said law. However, depending on circumstances of the case, such agreements on transfer of unregistered trademarks can not be considered perverse as there is no prohibition on such action. Therefore, it cannot be unambiguously stated that rights of ownership of unregistered trademark can or can not be transferred. The Law on Trademarks does not provide any method of trademark right protection in cases when trademark is unregistered, not applied for registration or can not be recognized as a well-known trademark. In this case, user of such trademark may protect his intellectual property rights according to the provisions of Competition Law (Article 16). However, it has to be emphasized that trademark registration can not be cancelled under the provisions of Competition Law. In any case, owner or user of unregistered trademark has a right to file a claim with the court or file an opposition with the State Patent Bureau when requesting cancellation of trademark registration according to its non compliance with absolute grounds of trademark registration. The Law on Trademarks provides temporary legal protection to the trademark application enabling its owner to file claims, oppositions or pretensions to other person. However, it has to be noted that trademark application cannot be subject to opposition on infringements according to Article 38 of the Law on Trademarks. In this case, only pretension noticing on possible infringement of rights can be filed to the owner of trademark application. Defendant basing its arguments on fact of prior usage has to take into account that earlier registration of trademark is crucial for overcoming the opposition or winning the case. However, the same as in case of unregistered trademark, the trademark application may be protected according to the provisions of Article 16 of the Competition Law that is unfair competition. Notions of unfair competition and bad faith application are quite different. Parties may not be competitors in cases of bad faith application. However, it has to be noted that possibility of protection of intellectual rights on the ground of bad faith application or registration emerged only in year 2001. Well known trademarks are protected even unregistered. In case unregistered trademark owner rights could be protected under the Law on Trademarks, the owner of such trademark should file a claim with the court on recognition of well known trademark. The Law on Trademarks provides broader rights to the owner of a well known trademark that to the owner of registered trademark. Owner of unregistered well known trademark has an exclusive right to prohibit the use of trademark that may be constituted as reproduction, imitation or translation of a well known trademark and that can mislead public because of use of the trademark on identical and similar goods or services. The protection of a well known trademark is related not with registration but with the mark being known, famous in public. That is the peculiarity of legal protection of a well known trademark. It has to be noted that such peculiarity is influenced not by the need to protect the trademark owner‘s interests and rights but the need to eliminate likelihood of confusion on the part of the public that selects similar goods according to trust or reputation that is provided by certain trademark. The question of compensation of damages in cases of unregistered trademarks is done according to general grounds – not only compensation of direct damages is possible (when the reduction of value is compensated), but indirect damages (when lost profit is compensated) as well. Profit made by defendant may be damages of the plaintiff as well. The loss of part of the market or reduction of sales volume as lost profit has to be proved by the plaintiff himself. One of the common type of damages is understatement or possibility of lapse of distinctiveness. It is obvious, that trademark registration as a main condition of trademark legal protection is not a single one. Therefore, successful protection of material rights of unregistered trademark owner is possible as well. It is likely that illegal use of a well known trademark may cause not only material damages to its owner but immaterial (moral) damage as well. The Civil Code imperatively constitutes that immaterial or moral damage is compensated only in cases stated in the Law. However, the Law on Trademarks and Competition Law does not provide with the opportunity to compensate immaterial damages. The conclusion may be drawn that possibilities to fully compensate damages regulated by laws are not enough. Therefore, the Law on Trademarks has to be supplemented with the provision that would allow the injured party to request compensation of immaterial damages in the court.