Use of mark in slightly different form sufficient to avoid cancellation

In AB Sanitas v Pharmstandart-Leksredstvo (December 30 2010), the Vilnius District Court has held that the registration of the trademark CITRAMONUM P for goods in Class 5 of the Nice Classification could not be revoked on the grounds of non-use.
 
On December 16 2009 Lithuanian company AB Sanitas filed an action for the revocation of the trademark CITRAMONUM P (Registration 40894), which covers pharmaceutical preparations (analgesics, antipyretics and medicines from headaches) in Class 5. The trademark was owned by Lithuanian company Veratrum UAB. However, during the proceedings, the trademark was assigned to Russian company Pharmstandart-Leksredstvo. Therefore, the Russian company became the defendant in the proceedings.
 
The court action was filed under Article 47(2) of the Law on Trademarks of the Republic of Lithuania. Article 47(2) provides that a trademark registration should be revoked if, within a period of five years following the issuance of the certificate of registration, the proprietor of the mark has not put it to genuine use in Lithuania or has not expressed a serious intention to use the mark in respect of the goods and/or services for which it is registered, or if the mark has not been put to genuine use during a period of five consecutive years, except in cases where use of the mark was prevented by serious reasons (eg, restrictions on imports or other circumstances beyond the proprietor’s control).
 
Sanitas claimed that the mark CITRAMONUM P had not been used in the territory of Lithuania since the certificate of registration was issued in May 2001. Sanitas indicated that there was no registration for a medicine bearing the trademark CITRAMONUM P on the Register of Pharmaceutical Preparations during the relevant period (May 2001 to December 16 2009). Therefore, the owner of the mark could not sell pharmaceuticals under the CITRAMONUM P mark in the territory of Lithuania. Moreover, no licence to use the trademark CITRAMONUM P had been registered with the Lithuanian State Patent Office during the relevant period. Consequently, the trademark CITRAMONUM P had not been used in Lithuania during the five-year period.
 
In its defence, the defendant provided:
•  evidence showing that pharmaceutical preparations had been sold in Lithuania by Veratrum UAB under the trade name Citramon P (which is a slightly modified form of the CITRAMONUM P mark);
•  public surveys showing that the Lithuanian public is aware of the Citramonum P pharmaceutical product;
•  data showing the sale of pharmaceutical products under trademarks that included the elements ‘citramon’ and ‘citramonum’; and
•  internet pages listing the most popular pharmaceuticals in the country.
The defendant also argued that use of term ‘citramon’ with or without a Latin ending (citramonum/citramon) did not alter the distinctive character of the mark.
    
The Vilnius District Court dismissed Sanitas' action.
 
The court stated that the evidence submitted by the defendant proved that a slightly modified form of the trademark CITRAMONUM P (ie, CITRAMON P) had been in use in the territory in Lithuania during the period between May 2001 and December 16 2009. Therefore, it could not conclude that the trademark CITRAMONUM P had not been in use during a continuous period of five years.
 
The decision has been appealed to the Appeal Court of the Republic of Lithuania.
 
Giedre Domkute, AAA Baltic Service Company-Law Firm, Vilnius

Source: http://www.worldtrademarkreview.com