Since October 1, 2017 the second part of changes regarding the new European Union Trademark Regulation took place on the European Union (EU) level, which have already affected or are to affect the national trademark legislation of the EU Member States including Latvia.

The changes concern three main categories: removal of the requirement for graphical representation of the mark, introduction of certification mark and several procedural changes. The main points of the procedural changes are listed below.

Since October 1, 2017 it is not possible any more to claim priority after a European Union Trade Mark (EUTM) application is filed. Priority claims must be filed with the European Union Intellectual Property Office (EUIPO) together with trade mark application. The supporting priority documentation must be provided within 3 months from the date of filing. The Office, however, does not check the priority, thus leaving this at the trust of the applicant. If the supporting priority document is not filed in the language of the EUIPO, it is up to the Office whether to request the respective translation. The fact that the EUIPO does not check priority claims directly affected EUTM conversion procedure in Latvia resulting in the necessity to provide the priority documents translated into the Latvian language at the time of filing of a conversion application, if the applicant wants to claim the priority from in the converted EUTM.

Another change relates to acquired distinctiveness through use, which now can be invoked as principal or subsidiary claim either at the time of EUTM filing or in response to the first examiner’s objection. While a principal claim implies a single decision taken both on inherent and acquired distinctiveness, a subsidiary claim is subject to the decision on inherent distinctiveness. In other words, the application is first considered as to inherent distinctiveness and, where there is none, the applicant can exhaust the right of appeal on that stage only. Following negative decision on inherent distinctiveness, the subsidiary claim on acquired distinctiveness is considered. A new deadline for providing evidence of acquired distinctiveness through use is set, thus preventing the applicant from extra money and resource input for collecting evidence unless it is really necessary.

Moreover, the use of languages within EUIPO became more flexible. Evidence materials relating to proving acquired distinctiveness or reputation can be submitted in any official language of the EU. The translation (inter alia partial translation) may be required by the EUIPO in special cases. This does not relate to evidence of substantiation (such as trademark certificates, renewal certificates or provisions of the law), they are still required to be filed in or translated into the language of the proceedings. Besides, since October 2017, the EUIPO accepts evidence from online sources recognized by the Office with regard to registered rights.

Also, a completely new process has been introduced in the EUIPO for cases when an agent or representative registered EUTM without the permission of the legitimate owner of the mark. Now the latter is entitled to request forced assignment of the said EUTM instead of filing an invalidation action, thus making assignment an alternative instrument to invalidation proceedings. When it comes to opposition and cancellation proceedings, the requirements of admissibility and substantiation for relative grounds have been revised to bring clarity. Finally, some clarifications have been also made to both the proceeding and structure of the Boards of Appeal of the EUIPO.

Last but not least, despite fax still remains the most important means of communication of the EUIPO, as from 1 January 2018 the renewals of new EUTM applications cannot be accepted by fax. The delivery of correspondence by deposit in a post box or hand delivery was already rejected as from October 1, 2017.

Most of the above-mentioned changes in the EUIPO will influence the IP legislation of Latvia due to mutual harmonization processes and further changes as to national trademark law will follow in 2019.

Patents There are 3 ways of obtaining a patent protection in Latvia, namely, direct national filing before the Patent Office of Latvia and filing before the European Patent Office (EPO) followed by the validation of the granted European Patent in Latvia and Euro- PCT. Patent protection through PCT procedure is possible in Latvia only by European regional phase followed by respective validation. In contrast to some European countries, Latvia does not require the translation of full text of the specification, only the claims must be translated into Latvian for validation purposes. To further maintain the validity of the European Patents, the relevant maintenance fees must be duly paid to the Latvian Patent Office.

National Latvian patent legislation is getting harmonized with the legislation of the rest of the European countries and takes after the European Patent Convention. An invention shall be protected with a patent in any field of technology if the invention is new, it has an inventive step and it is susceptible of industrial application. The subject of an invention may be a device, method, substance, or a composition of substances or biological material. However, discoveries, scientific theories and mathematic methods, aesthetic creations, schemes, intellectual activities, rules and methods for commercial activities and games, as well as computer programs and methods for presentation of information cannot be patented.

There is one peculiarity in national patent legislation that differs Latvia from many European countries, namely, pursuant to Section 36 of the Patent Law the applicant has the right to make amendments in the patent application only if they do not change the essence of the invention and do not go beyond the scope of the originally filed claims.

The examination procedure of the national patent differs much from that of EPO.

While EPO checks novelty, industrial applicability and inventive step, the Latvian Patent Office conducts examination as to the conformity with formal requirements only and checks the patentability of patent object. The patent application shall be made public as soon as possible following 18 months from the filing date or – if a priority has been requested – from the first earlier priority date of the application. An opposition can be filed by any person within 9 months since publication of the notification of the grant of a patent. The grounds for opposition are as follows: the subject matter is not patentable or does not have any industrial applicability, the disclosure of the invention is unclear or there have been any amendments that change the essence of the invention or/ and extend the scope of the claims. A granted national patent can be also challenged through a court procedure on the basis of lacking novelty and inventive step.

Patents are valid for 20 years from the filing date of the application and the patent owner has an exclusive right to prevent anyone from using it without his approval. The right to utilize the patent can be obtained by the way of license. Up to now the Latvian Patent Office has not introduced a publicly available online national patent database but is working on it.

Supplementary Protection Certificate Both a validated European patent or a national Latvian patent is valid in Latvia for 20 years; however, the term of protection for medicinal products and plant protection products can be extended up to 5 years. The application for obtaining SPC must be filed not later than 6 months after the issuance of the relevant marketing authorization or grant of the patent, whichever expires latest.

Trade Marks Trade mark protection in Latvia can be obtained by 3 ways, namely, by filing a national Latvian trade mark with the Latvian Patent Office, filing an international application with WIPO and designating Latvia as a contracting state or by filing a European Union Trade Mark (EUTM) with the European Union Intellectual Property Office (EUIPO).

After Latvia’s accession to the European Union in 2004, the majority of applicants make a choice in favor of EUTM instead of filing national marks. Likewise, seniority is often claimed from the national marks for the relevant EUTM with further lapse of the national marks. By filing a EUTM the applicants acquire broader territorial protection in a cost-effective manner, thus enforcing their IP rights more efficiently.

Due to harmonized trade mark legislation, the national laws are much the same as the ones of the European Community. The criteria of non-registrability of national marks is also similar to EUTM. Following the European Court of Justice’s decision in IP TRANSLATOR case, the Latvian Patent Office also formulated a list of imprecise terms of the Nice Classification, which can be found at the Office’s homepage. Registration of retail services is possible, providing the nature of such trade is clearly indicated by the applicant.

On March 23, 2016 the Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation entered into force.

The fee system of EUIPO has changed from a basic fee that covers up to three classes of goods and services to a ‘pay-per-class’ system. The same amendment provides a transitory 6-month period for the owners of the trademark filed before IP Translator case to adjust the specification of their marks (if they were filed for class headings) to their original intention. From October 1, 2017 the signs can be represented at EUIPO in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. By this provision the requirement of the graphical representation is also removed. Moreover, possibility of undertakings to place on the market different forms of registered trade marks significantly broaden abilities of blind and visually impaired people to easier and better distinguish the origin of goods. Since blind and visually impaired people are a competent part of the consumer society, their ability to recognize the trade marks is also of high importance to undertakings.

When applying for EUTM it is always advisable to use fast track option by choosing a harmonized database of the Nice Classification terms. This database contains terms that have already been accepted by EUIPO and by all national intellectual property offices in the European Union and even beyond. Choosing fast track option allows for a quick and smooth examination procedure. There is also one more advantage when filing a EUTM though Latvian attorneys. Choosing Latvian and English languages as the languages of the application ensure that no other languages will be used in the further EUIPO proceedings. Also, the communication with the examiners is more convenient and smooth.

Like in all EU countries, Latvian trade marks can be filed with claiming priority, providing the deadline of 6 months is met. International trade mark registrations can be also based on national Latvian trademark applications or registrations according to the Madrid System.

Likewise EUIPO, the Latvian Patent Office conducts examination only on absolute grounds and neither of the Offices refuses marks due to the conflicts with earlier rights.

The principal difference between examination procedure of Latvian national marks and EUTM is that the opposition period starts at the date of registration and publication of the national mark, but EUTM is first published for opposition purposes and only when the opposition period is over the EUTM is registered, providing that no opposition was filed. If during an opposition period, a notice of opposition is filed against EUTM the parties are given a 2-month cooling-off period during which they can settle the case amicably. Cooling-off period can be extended for another 22 months on request of the parties. If the opposition is not settled amicably, EUIPO gives time for the parties to provide observations and evidence and decide on the dispute. The losing party must cover the opposition expenses.

One more principal difference between the opposition proceedings against the national mark and EUTM is that in Latvia the substantiation is filed alongside with filing the opposition, while in EUIPO the notice of opposition is filed first and only then after expiration of the cooling-off period the substantiation follows.

Both national trade marks and EUTM become subject to use requirements 5 years since date of registration and are valid for 10 years since its filing date with a possibility of unlimited number of renewals. The Latvian Patent Office maintains the publicly available online database of national Latvian trade mark applications and registrations.

Industrial Designs There are 3 ways of obtaining a design protection in Latvia, namely, direct national filing before the Patent Office of Latvia, filing of a RCD before EUIPO and filing an international design application through the Hague system before WIPO.

After Latvia’s accession to the European Union in 2004, the popularity of national designs decreased a lot giving preference to RCD filings. Protection of unregistered designs is also available in Latvia through an Unregistered Community Design (URCD), which is valid for 3 years from the date when such design has been first made available to the public in the European Community. After expiration of 3 years, no further protection is possible. However, the protection of URCD is limited only to enforcement against identical copying. If the other party can prove that their design has been created independently, no infringement fact could be established in contrast to RCD cases. Designers’ rights can be also protected by copyright.

According to the law, a design is the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture or materials of the product or its decoration (ornamentation). In order to obtain legal protection the design must be new and have individual character. Legal protection shall not be granted to the appearance of a product, which is in conflict with the public policy or socially accepted principles of morality.

Neither novelty nor individual character is corrupted providing that the design was disclosed by the designer or successor in title within a time period of 12 months preceding the filing date for the registration or the date of priority. One design application may also contain a request to register several designs (multiple application). In this case all products included in one application (except for ornamentation) shall pertain to the same class of the Locarno Classification and the applicant must be the same.

The examination of the RCD application as to the conformity with the formal requirements is rather quick and registration will be granted in a couple of days. This is another reason why so many applicants choose RCD instead of national design filings, which get registration within 4-6 months and require the payment of 2 official fees. After registration the design’s validity can be maintained for a period of 25 years, providing it is renewed each 5 years.

RCD can be challenged only after registration by filing an application for declaration of invalidity to EUIPO. The Office delivers the application to the RCD owner giving 2 months for filing observations in response to the declaration of invalidity.

The Latvian Patent Office also maintains the publicly available online national design database that is accessible through the Office’s homepage.

Copyright Copyright and neighboring rights cannot be registered in Latvia. Protection starts from the date of the creation of the work and lasts for the entire life of the author and for another 70 years after the death of the author. Protection of the neighboring rights is effective for 50 years from the date of the first performance.

A copyright and or/neighboring right infringement action can be brought for the violation of the copyrights owner’s exclusive moral or economic rights to the first instance courts in Latvia.