Contributed by Inga Lukauskiene, Attorney-at-law

On September 27 2006 the Vilnius County Court rejected Mars Inc's claim for the invalidation of Registration 36856 of the trademark METRO, owned by the respondent Ulker Gida Sanayi ve Ticaret AS. The plaintiff stated that the respondent's trademark was similar to its figurative and three-dimensional trademarks MARS (Registrations 6792, 20941 and 26604) and was registered for identical and similar goods in Class 30; therefore, there was a likelihood of confusion on the part of the public. The plaintiff also stated that the respondent had committed an act of unfair competition when registering its trademark.

The court rejected the claim that the words 'mars' and 'metro' – which have different meanings and are visually and phonetically dissimilar – should be considered as the decisive elements in the perception of the marks. The similar colours and their mirror image in the marks were considered to be of secondary importance. The court stated that the colours black, red, gold and yellow were used by various manufacturers in the packaging of identical goods; therefore, the similarity of the colours was not decisive in selecting the goods.

Moreover, the court found that the respondent had committed no act of unfair competition when registering the trademark METRO, as the respondent's trademark had been used in Lithuania for over 10 years and the plaintiff had tolerated the registration and use of the trademark for over five years. This part of the decision was not appealed and is thus final.

The respondent made a counterclaim for annulment of the registrations of the plaintiff's trademarks MARS on grounds of non-use, as the Mars chocolate bars sold in Lithuania were manufactured not by the plaintiff itself, but by a company related to the plaintiff. According to the Trademarks Law, a licence to use a mark cannot be opposed to third parties if it has not been registered with the Register of Trademarks. As the licences to use the plaintiff's trademarks were not registered, the respondent alleged that the trademarks could not be used against it or constitute evidence of the use of the marks.

The court rejected the respondent's counterclaim, finding that the marks were actually in use, and failure to register a licence did not counteract this fact. This part of the decision has been appealed. The respondent alleged that the court erred in evaluating the legal consequences of a failure to register a licence agreement and that failure to register a licence agreement had legal consequences only for the parties to which the right to use the mark had been granted (although the law states the contrary).