Republic of Latvia Cabinet Regulation No. 266 Adopted 27 April 2021

Regulations Regarding Applications for the Registration of Trade Marks, Transfer of Rights and Licensing Thereof

Issued pursuant to
Section 28, Paragraph eight, Section 29,
Paragraph eleven, and Section 30,
Paragraph six of the Trade Mark Law

I. General Provision

1. The Regulation prescribes:

1.1. the requirements in relation to the applications for the registration of types of trade marks;

1.2. the procedures for the examination and registration of the transfer of registration of a trade mark and of an application for the registration with the Patent Office;

1.3. the procedures for the examination and registration of licensing agreements, amendments thereto, and termination of licensing agreements in the Patent Office.

II. Requirements in Relation to the Applications for the Registration of Types of Trade Marks

2. The reproduction of the sign applied for the registration of a trade mark shall determine the subject-matter of the registration of the trade mark and the protection thereof. The subject-matter of the trade mark protection may not be extended by the indication regarding the type of the sign applied for the registration or the description of such sign.

3. The sign applied for the registration of a trade mark, in accordance with the requirements of Section 4, Paragraph one, Clause 2 and Paragraph two of the Trade Mark Law, shall be reproduced, using generally available technologies and means suitable for the type of the sign:

3.1. a word mark shall be represented by submitting a reproduction of the sign in standard script and layout without any graphic feature or colour;

3.2. a figurative mark shall be represented by submitting a reproduction of the sign showing all its elements and in the respective case - colours;

3.3. a shape mark shall be represented by submitting a graphic reproduction, photographic reproduction, or computer generated representation. A reproduction shall provide unambiguous representation in respect of the shape of the sign and, where necessary, it may include not more than six different views;

3.4. a position mark shall be represented by submitting a reproduction which appropriately identifies the position of the sign and the size or proportion thereof with respect to the particular goods. Elements which are not the subject-matter of registration shall be visually excluded from the protection, preferably reproducing them with interrupted or pointed lines. A description may be added to the reproduction on how the sign is placed or attached to the article;

3.5. a pattern mark shall be represented by submitting a reproduction showing the pattern of repetition, and the mutual placement of repeating elements is unambiguously recognisable. A description may be added to the reproduction on how the elements of the sign regularly repeat;

3.6. a colour mark shall be reproduced depending on its nature:

3.6.1. if it consists of just one certain colour without any contours (colour itself), it shall be represented by submitting a colour reproduction to which an indication of a particular colour shall be added, referring to a generally recognised colour code;

3.6.2. if it consists of a combination of colours without any contours, it shall be represented by submitting a reproduction that shows the systematic arrangement of the colour combination in a uniform and predetermined manner to which an indication of the colours used shall be added, referring to a generally recognised colour code. A description of the colour placement may also be added;

3.7. a sound mark shall be represented by submitting an audio file in which a sound or sound combination is reproduced, or by precise musical scores of sound sequence;

3.8. a motion mark shall be represented by submitting a video file or by a series of sequential still images (not exceeding six images) showing the movement or change of position. If still images are used, they shall be numbered or description shall be added to them in which sequence is explained;

3.9. a multimedia mark shall be represented by submitting an audiovisual file which unambiguously demonstrates an image and sound combination;

3.10. a holographic mark shall be represented by submitting a video file, a graphic or photographic reproduction, or a computer generated representation which contains the necessary views for full identification of the holographic effect.

4. The Patent Office is entitled to change the indication of the type of the sign provided by the applicant in accordance with the definitions of Section 4, Paragraph two of the Trade Mark Law.

5. If the sign applied for the registration does not belong to the types of signs listed in Section 4, Paragraph two of the Trade Mark Law, the reproduction thereof shall conform to the requirements of Section 4, Paragraph one of the Trade Mark Law, and a description shall be added thereto.

6. If the application for the registration includes a description of the sign applied or it is added thereto, it shall conform to the reproduction of the sign. The Patent Office may include an extract from the description of the sign in the records of the Trade Mark Register (hereinafter - the Register) if the reproduction of the sign is difficult to be perceived without it.

7. If the reproduction of the sign applied is not provided electronically, it shall be reproduced on a paper. If the correct orientation of the sign is not obvious, a mark "augša" [top] shall be added to the reproduction.

8. The reproduction quality of the sign applied shall be such that it could be reduced or, in the respective case - enlarged up to the size of 8 x 8 cm, retaining the possibility to clearly read the elements of the sign.

9. The layout of the trade mark, the sample of the article or fragment thereof which is labelled with the trade mark shall not be considered to be a reproduction of the sign suitable for the registration (the reproduction which is submitted together with the indications on the technical solution thereof).

10. Paragraphs 2, 3, 4, 5, 6, 7, 8, and 9 of this Regulation shall be applied also to the applications for the registration of collective marks and certification marks.

III. Procedures for the Examination and Registration of Transfer of Rights to a Trade Mark

11. If transfer of rights to a trade mark is applied for the registration, the Patent Office shall verify whether the information necessary for the registration of the transfer of rights to a trade mark is indicated in the application of the owner of the trade mark, the applicant of the trade mark, or of the person to whom the rights are transferred:

11.1. the registration number of the trade mark or in the respective case - the number of the application for the registration;

11.2. the information on the owner or in the respective case - on the applicant of the trade mark and address of his or her declared place of residence (the persons residing abroad shall provide the address of the permanent place of residence);

11.3. the information on the person to whom the rights to the trade mark are being transferred: the given name, surname, and declared place of residence of a natural person (the persons residing abroad shall provide the address of the permanent place of residence) or the full name and legal address of a legal person;

11.4. the indication whether the rights to the trade mark are being transferred in relation to all goods and services to which the registration of the trade mark or the application for the registration of the trade mark applies, or just in relation to particular goods or services. In such case the names of the relevant goods or services shall be grouped by classes in accordance with the international classification of goods and services (hereinafter - the Nice Classification).

12. If a person to whom the rights to the trade mark are being transferred is a foreign person, the Patent Office shall verify whether, in accordance with the requirements laid down in the Law on Industrial Property Institutions and Procedures, the representative thereof in Latvia - a professional patent attorney - and the address of the place of practice of such representative are indicated in the submission.

13. If it is indicated in the submission or there are another grounds to believe that the rights to the trade mark are transferred as a result of an agreement between the persons, the Patent Office shall verify whether the submission is accompanied by one of the following documents which has been signed by both contracting parties in a written form or electronically with a secure electronic signature and date stamp:

13.1. the agreement or a certified copy or true copy thereof (the Patent Office shall take due account in case the submitter has indicated particular information in the agreement which is to be considered to be commercial secret);

13.2. a certified extract from the agreement which determines the transfer of rights to the trade mark;

13.3. the certificate of the transfer of rights by which the parties confirm that the transfer of rights to the trade mark has taken place in accordance with the agreement and which is signed by the previous owner of the trade mark and the acquirer of the trade mark, or in the respective case - the previous applicant of the trade mark and the new applicant of the trade mark;

13.4. the deed of the transfer of rights by which the parties have agreed on the transfer of rights and which is signed by the previous owner of the trade mark and the acquirer of the trade mark or in the respective case - the previous applicant of the trade mark and the new applicant of the trade mark.

14. If it is indicated in the submission or there is another basis to admit that the rights to the trade mark are transferred as a result of reorganisation of undertakings, the Patent Office shall verify whether the submission is accompanied by a certified copy or an extract from the document issued by a competent authority which attests to the reorganisation of the undertakings (for example, an extract from the Commercial Register).

15. If the rights to the trade mark are transferred as a result of an agreement of persons or reorganisation of undertakings, however, it does not concern all the persons who jointly own the right to the trade mark, the Patent Office shall verify whether a document signed by each entitled person whose rights to the trade mark are not being transferred with unambiguously expressed consent to the transfer of rights has been submitted.

16. If the rights to the trade mark are transferred as a result of another basis (for example, a legal norm or court ruling), the Patent Office shall verify whether the submission is accompanied by a certified copy or an extract from the document which approves the transfer of rights to the trade mark.

17. The Patent Office shall examine the submission for the transfer of rights to a trade mark which concurrently applies to several registrations of trade marks or applications for the registration if the following conditions have been met:

17.1. the previous owner of the trade mark and the acquirer of the trade mark or in the respective case - the previous applicant of the trade mark and the new applicant of the trade mark are the same for all registrations and all applications for the registration which are indicated in the submission;

17.2. the amount of the transfer of rights to the trade mark (the information referred to in Sub-paragraph 11.4 of this Regulation) is the same;

17.3. the specified fee for the transfer of rights to the trade mark for each registration of the trade mark and the application for the registration to which the transfer of rights applies has been paid.

18. If the requirements laid down in Section 28 of the Trade Mark Law and in this Chapter are met, the Patent Office shall make an entry in the Register.

19. Paragraphs 11, 12, 13, 14, 15, 16, 17, and 18 of this Regulation shall be also applied to the transfer of rights to a certification mark in conformity with the requirements of Section 76, Paragraph two of the Trade Mark Law.

IV. Procedures for the Examination and Registration of a Licensing Agreement of the Trade Mark, Amendments Thereto and Termination Thereof

20. If a licensing agreement of the trade mark is applied for the registration, the Patent Office shall verify whether the information necessary for the registration of the licensing agreement has been indicated in the submission of the licensor or licensee to the Patent Office:

20.1. the registration number of the trade mark or in the respective case - the number of the application for the registration;

20.2. the information on the owner or in the respective case - on the applicant (licensor) of the trade mark and the address of his or her declared place of residence (the persons residing abroad shall provide the address of the permanent place of residence);

20.3. the information on the person (licensee) to whom the right of use of the trade mark is being granted: the given name, surname, and declared place of residence of a natural person (the persons residing abroad shall provide the address of the permanent place of residence) or the full name and legal address of a legal person;

20.4. an indication whether the licensing agreement covers all goods and services for which the registration of the trade mark has been made or the application for the registration has been submitted, or also particular goods or services in respect of which the licence is granted. In such case the names of the relevant goods or services shall be grouped in the submission by classes in accordance with the Nice Classification;

20.5. the nature of the licensing agreement - exclusive licence or non-exclusive licence, whether any special conditions are established with the licensing agreement, including in respect of the form in which the trade mark will be used, or the quality of the licensee's goods or services;

20.6. if the licensing agreement refers only to a part of the territory of Latvia, a precise indication to such part of the territory;

20.7. the date of entering into the licensing agreement and the validity period thereof.

21. If a person to whom the right of use of the trade mark is being granted is a foreign person, the Patent Office shall verify whether, in accordance with the requirements of the Law on Industrial Property Institutions and Procedures, the representative thereof in Latvia - a professional patent attorney - and the address of the place of practice of such representative are indicated in the submission.

22. The Patent Office shall verify whether the submission for the registration of the licensing agreement has been accompanied by one of the following documents which has been signed by both contracting parties in paper form or electronically with a secure electronic signature and date stamp as the document confirming the information to be included in the Register:

22.1. the licensing agreement or a certified copy or true copy thereof (the Patent Office shall take due account in case the submitter has indicated particular information in the agreement which is to be considered to be commercial secret);

22.2. a certified extract from the licensing agreement which demonstrates the parties to the agreement and the licensed rights;

22.3. a notification of the granted licence which is signed by the owner and licensee of the trade mark.

23. The Patent Office shall verify whether the document referred to in Sub-paragraph 22.1, 22.2, or 22.3 of this Regulation contains a particular validity of the licensing agreement (the date of entry into effect of the agreement and termination of the agreement) and whether conditions for the extension of the licensing agreement have been provided if the parties have agreed thereon.

24. If the licensing agreement does not concern all the persons who jointly own the right to the trade mark, the Patent Office shall verify whether the submission for the registration of the licensing agreement has been accompanied by the document which has been signed by each entitled person other than party to the licensing agreement and in which the consent to the licensing agreement has been unambiguously expressed.

25. If amendments to the provisions of the registered licensing agreement are applied for the registration, the Patent Office shall verify whether the information necessary for the examination of the amendments to the licensing agreement has been indicated in the submission of the licensor or licensee to the Patent Office:

25.1. the registration number of the trade mark or in the respective case - the number of the application for the registration;

25.2. the information on the owner or in the respective case - on the applicant (licensor) of the trade mark and the address of his or her declared place of residence (the persons residing abroad shall provide the address of the permanent place of residence);

25.3. the information on the person (licensee) to whom the right of use of the trade mark has been granted and the address of the declared place of residence of such person (the persons residing abroad shall provide the address of the permanent place of residence);

25.4. the nature of the licensing agreement - exclusive licence or non-exclusive licence, whether any special conditions are established with the licensing agreement;

25.5. the date of entering into the licensing agreement and the initially intended validity period thereof;

25.6. the essence of the amendment to be made to the Register.

26. The Patent Office shall verify whether the submission is accompanied by one of the following documents confirming the amendments to the licensing agreement:

26.1. a certified copy of such document which certifies amendments to the provisions of the licensing agreement;

26.2. a notification of the amendments to the provisions of the licensing agreement which has been signed by the licensor and the licensee.

27. If amendments to the provisions of a registered licensing agreement concern the validity of the licensing agreement, the document referred to in Sub-paragraph 26.1 or 26.2 of this Regulation shall contain particular information on the amended validity period of the licensing agreement.

28. If amendments to the licensing agreement do not concern all the persons who jointly own the right to the trade mark, the Patent Office shall verify whether a document which has been signed by each entitled person other than party to the licensing agreement and in which the consent to the licensing agreement has been unambiguously expressed has been submitted.

29. If the termination of a registered licensing agreement has been applied for the registration, the Patent Office shall verify whether the information necessary for the termination of the licensing agreement has been indicated in the submission of the licensor or licensee to the Patent Office:

29.1. the registration number of the trade mark or in the respective case - the number of the application for the registration;

29.2. the information on the owner or in the respective case - on the applicant of the trade mark (licensor) and the address of his or her declared place of residence (the persons residing abroad shall provide the address of the permanent place of residence);

29.3. the information on the person (licensee) to whom the right of use of the trade mark has been granted, and the address of the declared place of residence of such person (the persons residing abroad shall provide the address of the permanent place of residence);

29.4. the date of entering into the licensing agreement and the initially intended end period thereof;

29.5. the date of actual termination of the validity of the licensing agreement.

30. The Patent Office shall verify whether the submission is accompanied by one of the following documents confirming the termination of the registered licensing agreement:

30.1. a certified copy of such document which certifies termination of the licensing agreement;

30.2. a notification of the termination of the licensing agreement which has been signed by the licensor and the licensee.

31. The Patent Office shall examine the submission for the registration of the licensing agreement, amendments thereto or termination of the licensing agreement which concurrently applies to several registrations of trade marks or applications for the registration if the following conditions have been met:

31.1. the owner of the trade mark or in the respective case - the applicant of the trade mark, and also the licensee are the same for all registrations and all applications for the registration which are indicated in the submission;

31.2. the information to be included in the Register is the same;

31.3. the fee specified for the registration of the licensing agreement, amendments thereto or termination of the licensing agreement has been paid in respect of each registration of the trade mark and application for the registration to which the requested entry in the Register applies.

32. If the requirements laid down in Section 29 of the Trade Mark Law and in this Chapter are met, the Patent Office shall make an entry in the Register.

33. Paragraphs 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, and 32 of this Regulation shall also be applied to the registration of the licensing agreement, amendments thereto and termination of the licensing agreement in respect of the collective mark and the certification mark, if the by-laws of the use of the collective mark or in the respective case - the by-laws of the use of the certification mark provide for the possibility to grant the licence.

Prime Minister A. K. Kariņš

Deputy Prime Minister,
Minister for Justice J. Bordāns

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Translation © 2021 Valsts valodas centrs (State Language Centre)