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Exclusive rights to the word mark “Ekstra” for wheat flour in Latvia belong to Dobeles dzirnavnieks, AS

– The word mark “Ekstra” lacks inherent distinctiveness, as it denotes something more than the required standard and associates with the qualities of being bigger and better than usual;

 – At the same time, the word “Ekstra” has never been an official term for a flour class or type in Latvia and; 

– The Industrial Property Board of Appeal found that evidence filed by the applicant Dobeles dzirnavnieks, AS (our client) is sufficient to prove acquired distinctiveness through use.

Background

On 20 October 2017 our client Dobeles dzirnavnieks, AS filed an application for registration of the word mark “Ekstra” (application No. M-17-1514) in class 30 (flour and preparations made from cereals).

The Latvian Patent Office admitted that the mark “Ekstra” is registerable for wheat flour as the evidence provided by the applicant was sufficient to prove acquired distinctiveness through use.

On 17 May 2019 a Lithuanian natural person Valdemaras Valkiūnas (the opponent) filed a notice of opposition with the Board of Appeal against the registration of our client’s mark “Ekstra” (reg. No. M 74 111). The opposition was based on absolute grounds for refusal, claiming that the mark is descriptive and lacks distinctiveness, as well as it has been filed in  bad faith.

The Board of Appeal’s decision

The Board of Appeal rejected the opposition pursuant to the following reasoning:

– The Board of Appeal considers that the mark “Ekstra” initially (internally, immanently) is devoid of any distinctive character. Consumers may perceive this word as referring to high quality of goods, added value to be obtained or as laudatory term, but not as a trade mark indicating commercial origin of a product.

– At the same time, the Board of Appeal acknowledges the word “Ekstra” has never been an official term for a flour class or type in Latvia. The number 405 is used to officially designate higher quality flour.

– The Board of Appeal regards that the owner of the contested mark has proven that the mark has acquired distinctive character in relation to wheat flour as a result of its extensive use in commerce. For the purpose of determining the acquired distinctive character of a trade mark, it is sufficient if the proprietor of the trade mark has used it in the ordinary course of business.

– The Board of Appeal argues that if manufacturers want their goods (flour) to stand out among others and attribute positive characteristics to the quality of these goods, they can also use such terms as special, excellent, super, superior.

– Lastly, the Board of Appeal states that there is no valid reason to claim that the application for registration of the word mark “Ekstra” has been filed in bad faith. It is self-evident that a manufacturer, who has commercially used a trademark for a long time, wants to acquire exclusive rights for it.

The decision of the Board of Appeal has not been appealed and has come into force.

The applicant in this case was represented by the trademark attorneys Kristīne Viļķina and Gatis Meržvinskis.

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