A slogan as a trade mark: the search before filing and recording a licence

Yes, a slogan can be registered as a trade mark. A mark may consist of any signs, including words, if they are capable of distinguishing the goods or services of one person from those of others (Article 5 of the Law of the Republic of Lithuania on Trade Marks (PŽĮ)). A slogan that has no distinctive character is refused. The State Patent Bureau (Valstybinis patentų biuras, VPB) does not check whether an identical or similar mark already exists, so you have to check this yourself before filing. Recording a licence in the register in Lithuania is not mandatory: it is recorded at the request of either party. An EU trade mark licence, as a rule, takes effect against third parties only once it is recorded.

The registration routes (national, international and EU) are described in Trade mark registration (in Lithuanian). Why to cover all the classes you need, how to cancel an unused mark, how long an application can be opposed, and why a company name is not a trade mark are answered in our FAQ (in Lithuanian). How to challenge someone else’s mark is covered here (in Lithuanian). This article is about slogans, the search before filing, and licences.

When a slogan works as a trade mark

The signs must meet two conditions. They must distinguish your goods or services from others. And it must be possible to show them in the register so that it is clear what is protected (PŽĮ Article 5).

A mark is refused if it has no distinctive character at all (Article 7(1)(2) of the Law on Trade Marks, PŽĮ). A mark is also refused if it consists only of signs or indications that may serve in trade to designate the kind, quality, intended purpose, value or other characteristics of the goods or services (PŽĮ Article 7(1)(3)). This is exactly where slogans run into risk. In our assessment, a slogan that only praises the product or describes what it does will often be seen as lacking distinctive character. An unusual slogan that people link with your company stands a better chance.

There is a way out. Such a mark can still be registered if, before the filing date or before registration, it has acquired distinctive character through use (PŽĮ Article 7(2)). This has to be proved.

In its examination of the mark, VPB checks exactly these absolute grounds (PŽĮ Article 43(1)). If the mark does not meet them, VPB decides not to register it for all or some of the goods or services (PŽĮ Article 43(2)).

A slogan with the logo, or on its own

The logo is already registered – can the slogan be added to it? A change to the representation of a registered mark is recorded only if it does not affect the distinctive character of the mark or does not substantially change its overall appearance (PŽĮ Article 50(4)). In our view, adding a slogan changes the overall appearance, so the slogan needs a new application. One application is filed for one mark (PŽĮ Article 38(3)).

If you will also use the slogan without the logo, it is worth registering it separately. A mark may contain elements that could not be registered on their own. The mark is then protected only as a whole, and those elements give no separate exclusive rights (PŽĮ Article 6).

EU only, or Lithuania only

A mark registered in Lithuania is valid only for the goods or services for which it is registered (PŽĮ Article 13(1)). An EU trade mark has a unitary character and equal effect throughout the EU (Article 1(2) of Regulation (EU) 2017/1001 on the EU trade mark, EUTMR). So you can register a slogan as an EU trade mark only: it will also be valid in Lithuania.

One EU rule matters for slogans. An EU trade mark is refused if it has no distinctive character or consists only of signs or indications that may serve in trade to designate the kind, quality or other characteristics of the goods or services (EUTMR Article 7(1)(b) and (c)), even if these grounds exist in only part of the EU (EUTMR Article 7(2)). In practice, a slogan that is a plain description in one EU language can block registration for the whole EU. So before filing an EU application, it is worth checking the slogan in other languages too. Here too a slogan can be registered if, through use, it has become distinctive for the goods or services for which registration is sought (EUTMR Article 7(3)). This, too, has to be proved.

For an EU application, it is worth choosing the classes afresh: they may match the classes of the Lithuanian mark or add to them.

How to check whether a name is already registered

VPB does not check earlier marks during examination (PŽĮ Article 43(1)). The relative grounds apply only when an interested party challenges the application or registration. The mark is then refused or declared invalid if it is identical to an earlier mark for identical goods, or if, because the marks and the goods are identical or similar, there is a likelihood of confusion on the part of the public (PŽĮ Article 8(1)(1) and (2)). So the search is your job, not VPB’s.

The law says what to check. An earlier mark is not only an application or registration filed in Lithuania. It also includes marks registered for Lithuania under the Madrid Protocol, EU trade marks, applications for these marks, and marks recognised as well known in Lithuania (PŽĮ Article 8(2)). You can search the databases of VPB, the EU Intellectual Property Office and the World Intellectual Property Organization.

Do not search only for identical words. A likelihood of confusion can also arise from a similar mark for similar goods (PŽĮ Article 8(1)(2)). A mark with a reputation in Lithuania (for an EU mark, in the EU) can be an obstacle even for dissimilar goods, if use of the later mark without due cause would take unfair advantage of it or harm its distinctive character or reputation (PŽĮ Article 8(1)(3)). The class does not settle the question either: goods are not regarded as similar just because they are in the same class, nor as dissimilar just because they are in different classes (PŽĮ Article 41(5)). So search the neighbouring classes as well.

A search is also needed when choosing a company or organisation name. Where the sign is identical or similar to the mark and the other statutory conditions are met, the owner of the mark may prohibit use of the sign as a trade name or company name or part of one (PŽĮ Article 14(3)(4)). In one case we told a client that the planned name could not be used because such a trade mark was already registered to someone else.

In whose name, and in which classes

It is worth registering the mark in the name of the company that uses it. The application states the applicant’s details, the mark applied for, and the groups of goods or services (PŽĮ Article 38(5)). Goods and services are classified under the Nice Classification (PŽĮ Article 41(1)). They must be stated clearly and precisely enough to determine the scope of the protection sought (PŽĮ Article 41(2)). An application may cover one or more classes, and a fee is paid for each additional class (PŽĮ Article 38(6)). Why it is worth covering all the classes you need from the start is explained in our FAQ (in Lithuanian).

A foreign natural person not permanently resident in the EU or the EEA, and a foreign company with no registered office, branch or representative office in the EU or the EEA, file with VPB and carry out the other registration steps through a patent attorney (PŽĮ Article 38(2)).

Does a licence have to be recorded with VPB

The applicant or the owner of a mark may grant an exclusive or non-exclusive licence for all or some of the goods or services, in all of Lithuania or in part of it (PŽĮ Article 27(1)). The details of a licence agreement are entered in the Register at the request of either party, once the fee is paid and the request and a document confirming the agreement are filed (Article 27(2) of the Law on Trade Marks, PŽĮ). From 1 January 2027 the details will be entered in the Register information system, with the same procedure (PŽĮ Article 27(2), as in force from 1 January 2027). The document must state the parties, the mark number, the type of licence, the goods or services, the term and the territory (PŽĮ Article 27(3)).

The law does not provide that an unrecorded licence is invalid. Compare this with an assignment of the mark: a transfer of rights takes effect from its entry in the Register and is invalid if not entered (PŽĮ Article 26(4)). From 1 January 2027 the rule is the same, except that it refers to the Register information system instead of the Register (PŽĮ Article 26(4), as in force from 1 January 2027).

The agreement should say who will enforce the mark. Unless the agreement provides otherwise, the licensee may bring court proceedings only with the licensor’s consent. An exclusive licensee may bring an action if the licensor, having received written notice, does not do so itself within 30 days, unless the agreement sets a different period (PŽĮ Article 27(7)).

For an EU trade mark, the difference is bigger. A licence is entered at the request of either party (EUTMR Article 25(5)). However, the licence takes effect against third parties in all Member States only once entered in the register. The exception is third parties who acquired rights in the mark after the licence was granted but knew of the licence on the date they acquired those rights (EUTMR Article 27(1)). Nor does the rule apply to a person who acquires the mark by transfer of the whole undertaking or by other universal succession (EUTMR Article 27(2)). So an exclusive EU trade mark licence is worth recording.

How to start

Send us the slogan or name, a short description of the goods or services you will use it for, and the countries. We will run the search, assess distinctiveness and propose classes, or review the licence agreement.

Phone +370 5 212 1506, email info@linden.lt

More about this service: company law services.