Senior Associate, Patent Attorney
ORANGE vs. orange-pay.com – Ruling of the Supreme Court Senate of the Republic of Latvia of 10 May, 2019, civil case No. C30699616
In 2016 the British company Orange Brands Services Limited (the Plaintiff) brought an action against the LLC TransferMoney (the Defendant), natural persons and the Institute of Mathematics and Computer Science University of Latvia claiming infringement of trademark rights and non-material damage. The action was brought before the Vidzeme District Court and based on the Latvian Law On Trade Marks and Indications of Geographical Origin Article 4 (5), Article 4 (7,8,9), Article 27 (1), Article 28, Article 28 (1), Article 39.2 (1), the Council Regulation (EC) No 207/2009 (26.02.2009) on the Community trade mark Article 1 (2), Article 9 (1). The Plaintiff Orange Brands Services Limited was represented in all court instances by trademark and design attorney, lawyer Gatis Meržvinskis.
Orange Brands Services Limited owns a trademark family “ORANGE” registered in the European Union, including such European Union trademarks as “ORANGE” No. 011428323, “ORANGE MONEY” No. 013709134, “ORANGE CASH” No. 011126448 etc.
The Latvian company LLC “TranferMoney” on the website www.orange-pay.com offered the following services – payment system services, payment account opening services, payment processing services, business creation (registration) services and sales services in different jurisdictions, as well as gambling and foreign transaction license services. All of these services correspond to goods and services in classes 9 and 36. On this site the company actively used the trademark “Orange Pay”.
The Vidzeme District Court (the first instance court) acknowledged that the Defendant has been using the mark “Orange Pay” in the course of trade and that this mark contains the same dominating element “ORANGE” as in the Plaintiff’s marks. Whereas, the term “Pay” was recognized as descriptive in relation to all goods and services offered by SIA “TransferMoney” on the mentioned site.
The first instance court in its judgment admitted that the mark “Orange Pay” creates similar associations with the Plaintiff’s marks “ORANGE CASH”, “ORANGE MONEY” and “ORANGE BANK”. Notably, the court recognized reputation and high level of recognition of the European Union Trademark “ORANGE” No. 011428323 for telecommunications, information technology and related goods and services thereof.
Further, the court came to a conclusion that the Defendants (natural person and LLC TransferMoney) by using the mark “Orange Pay” without the Plaintiff’s permission infringed Article 27, Article 4 (part 6, paragraph 2) of the Latvian Law On Trade Marks and Indications of Geographical Origin. The infringement resulted from registering the trademark “OrangePay” and the domain name orangepay.com, transferring it for commercial purposes to the company LLC TransferMoney and using the website www.orange-pay.com.
Based on the Plaintiff’s request, the District Court recognized infringement of intellectual property rights and ruled in favor of interim measures. The court obliged the Defendants not to use verbal or graphic mark “ORANGE” or any other identical/similar marks to the Plaintiff’s marks in relation to goods and services in classes 9 and 36 in the course of trade.
The Defendant appealed this judgment before the Riga Regional Court. Nevertheless, the second instance court affirmed conclusions already reached in the first judgment. The court once again acknowledged reputation of “ORANGE” marks in the European Union and considered trademark infringement as existing and interim measures to be applied reasonably.
Lastly, the Defendant (natural person) filed an appeal before the Supreme Court Senate of the Republic of Latvia. The ruling of the Supreme Court rendered on 10 May, 2019 rejected the Defendant’s cassation complaint pursuant to the Latvian Civil Procedure Law Article 464.1 (part 2, paragraph 2), which foresees that there was no clear evidence to deem that outcome in the appealed judgment was incorrect and that the case has a significant meaning for ensuring a unified case-law or further formation of law.