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Mikasa Corporation successfully fights against a bad faith trademark registration (decision by Vidzeme District Court of 15 November, 2019, civil case No. C30516018)

Petersona Patents  – AAA LAW represented in a civil case No. C30516018 the Japanese company Mikasa Corporation which is one of the most globally recognisable sports equipment manufacturers and a longtime official ball supplier to International Volleyball Federation’s events.

Core of the dispute

Mikasa Corporation (“Plaintiff”) brought a claim before the City of Riga Vidzeme District Court requesting invalidation of another person’s (“Defendant”) figurative trademark “MIKASA official ball supplier to the BVF” (reg. No. M 69 466) (the “Contested Mark”).

Plaintiff pointed out that it is the owner of European Union Trade Marks “MIKASA” (“Earlier Marks”) that are registered with respect to goods in Classes 25 and 28 of Nice Classification and have been in force since before the application date of Contested Mark. Being registered for identical goods in Classes 25 and 28 and having its dominant element consisting entirely of Plaintiff’s designation “MIKASA”, Contested Mark is considered as confusingly similar to Plaintiff’s Earlier Marks.

By filing a counter-claim Defendant argued that it has more substantiated rights in the figurative designation “MIKASA” due to having created it in 1973 well before the application dates of Plaintiff’s Earlier Marks. Thus Defendant claimed the court had to prohibit Plaintiff from using Earlier Marks in Latvia.

Bad-faith of Defendant – successful outcome for the client

Defendant did not substantiate its claims with any proof. Whereas Plaintiff convincingly demonstrated not only the fact that Plaintiff has been using the designation allegedly created by Defendant even earlier, since 1967, but also the fact that Defendant had demanded from Plaintiff sizeable authorship reward for creating the designation in question. Furthermore, it was shown that Defendant had posted on social media misleading information about being associated with Plaintiff. This had led to Contested Mark being recognised as the trademark of 2016 in a contest organised annually by the Patent Office of the Republic of Latvia.

The court rejected Defendant’s counter-claim as unfounded because the circumstances of the case, namely Defendant asking for financial benefits from Plaintiff, the registration of Contested Mark, and the actions thereafter were indicative of Defendant’s bad-faith which manifested in an attempt to preclude unburdened use of Earlier Marks, the desire to use Plaintiff’s good reputation in bad-faith and to obtain financial gains at the expense of Plaintiff. The court completely upheld Plaintiff’s claim as well-founded and declared the Contested Mark as invalid as of the date of registration.

Award of damages for moral injury

For the false claims made in court and in public that resulted in deceptive impression of Defendant having economic ties with Plaintiff the court awarded for the benefit of the client moral damages of 5000 EUR. The court saw Defendant’s unlawful use of Earlier Marks as having negatively impacted the reputation of these marks. In view of the court the amount of damages is capable to indemnify Plaintiff as well as discourage Defendant from committing a similar offence in the future.

Team

The client’s interests in this case were represented by the managing partner Gatis Meržvinskis and lawyer Toms Lintiņš.

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