Newsletter No. 40

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 2004-o

Earlier trademark

Opposed trademark

PENOPLEX

Opposition to the granting of legal protection to trademark PENOPLEX(accelerated procedure).

The opponent considers that the applicant’s mark “PENOPLEX “ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “PENOFLEX”. In addition, the applicant’s goods in Class 17 are similar or identical to those covered by the opponent’s earlier mark.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative; thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.


Decision No. 1920-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark „ slice in 3 Maksa 3 osas lisatasuta + device .

Both trademarks are protected for services in Class 36 and the services covered are in part identical and of the same kind.

The Board considers that the word “SLICE” is the visually dominant element of the trademarks, with or without the addition of the number 3. According to the Board, the word “in” in the contested mark is so stylized that it acts as a figurative element. As trademarks are remembered and referred to in both trademark and commercial practice through the word element, it is likely that the word SLICE is also the most memorable and distinctive element phonetically, regardless of how the consumer pronounces it. Thus, the most striking, memorable and dominant element of the comparable trademarks is essentially identical and the overall impression given by the comparable trademarks as a whole is similar.

The opposition was sustained.


Decision No. 2027-o

Earlier trademark

FOOD ON FOOT

Opposed trademark

Opposition to registration of the trademark „ On Food + device.

The mere fact that the comparable trademarks contain identical elements (the words „food“, „on“) is not, in the Board’s view, sufficient to consider the trademarks to be similar to an extent which could lead to confusion. The difference is compounded by the fact that the opponent’s trademark contains, as a third word, the element „foot“, which cannot be found in the applicant’s. The visual style of the applicant’s mark, and the use of dark blue and orange also increase the visual difference between the trademarks.

The Board considers that the difference between the comparable trademarks is particularly clear from a semantic point of view. The opponent’s trade mark „FOOD ON FOOT“ relates to the concept of providing food to the consumer in a way that the food is intended to be consumed upright, quickly and/or in passing (such as the „street food concept“). The applicant’s trade mark does not give rise to similar associations.

The Board also emphasizes that the word „food“ in trade marks for foodstuffs is not in itself an indication enabling consumers to identify the origin of the goods and that the mere presence of the common element „food“ in comparable trademarks does not create a likelihood of confusion between the marks of the opponent and the applicant.

The Board agrees with the applicant that, although the comparable marks contain common elements, the marks as a whole are not similar due to the different arrangement and the resulting visual, aural and semantic differences.

The opposition was dismissed.


Decision No. 1812-o

Earlier right/symbol

STENBOCKI MAJA

Opposed trademark

STENBOCK

Opposition to registration of the trademark „ STENBOCK.

The Board notes that “Stenbocki maja” (Stenbock house) cannot be considered as a coat of arms, flag or other national emblem of the Republic of Estonia or as an official mark or stamp.

Despite the shortcomings in the opponent’s arguments, the Board considers that “STENBOCK HOUSE” can nevertheless be regarded as a symbol. The Board assumes that, according to the evidence adduced, the opponent and other executive authorities operating at the same address have used the word element “STENBOCK HOUSE” since the year 2000, including at government press events.

The Board contends that the contested mark mimics the opponent’s symbol. The Board considers that the absence of the word “MAJA” (house) in the contested trademark does not change the important and memorable distinctive part for the consumer and does not reduce the risk of a misleading link between the contested trademark and the opponent’s symbol (thus also including the State Chancellery).

It would therefore be contrary to the public interest to register the contested mark.

The opposition was sustained.


Decisions No. 1828-o and 1829-o

Earlier trademarks

EESTI 200

Opposed trademarks

EESTI 200

ERAKOND EESTI 200

Opposition to registration of the trademark „ EESTI 200.

Opposition to registration of the trademark „ ERAKOND EESTI 200.

The earlier trademark “EESTI 200 + device” is narrowly protected for the organization and conducting of symposiums listed in Class 41. The list of services for the contested marks does not include the organization and conducting of symposiums. The Board considers that, although some of those services may be close to those listed in the registered trade mark, the full range of those services is not attributable to, necessary for, or a substitute for the organization of symposia for consumers.

In the present case, since the conflicting registered mark is registered for specific services used by attentive consumers, and the services of the same kind do not appear in the list of goods and services in the contested mark, the Board considers that there is no likelihood of trade mark confusion.

According to the Board, the reputation or the particularly distinctive character of the earlier combined trademark, which could be damaged or exploited by the use of the contested trademark in various services, has not been established.

The opponents claim that they jointly own the well-known word mark “EESTI 200”, which is established earlier than the contested trademark. The Board does not deny that the evidence submitted shows the idea / initiative of EESTI 200 and the existence of a movement of the same name, but it has not been established that anyone offered a specific product or service under that trademark, distinguishing that product or service from other function. If it has not become a trademark, it cannot be a well-known trade mark. Accordingly, the opponent’s allegations concerning the contradiction of the contested marks in relation to the allegedly well-known earlier mark “EESTI 200” are unfounded.

The oppositions were dismissed.

Court Decisions

Harju County Court, case No. 2-17-141

A claim for revenue from an infringement of utility models or, in the alternative, a claim for compensation for value.

Counterclaim for cancellation of registrations of utility models.

The action was upheld in part, the applicant’s alternative claim was upheld and damages were awarded.

According to the application submitted to the Harju County Court, the applicant owns registered utility models No 00709, 00788, 00789, 00790 and 00848, on the basis of which it is possible to manufacture buildings and modules on a concrete slab foundation that can be raised and lowered, and that can be transported on a car trailer. There are several modular house factories in Estonia, but none of them build buildings on a transportable concrete foundation.

Since the applicant has no objection that utility model No 00709 should be annulled for lack of novelty, the Court upholds the counterclaim of defendant 2 and annuls utility model No 00709.

Based on expert testimonials, the court recognizes the rights of the owner of the utility models with respect to the other two methods and the two devices (utility models No 00788, 00789, 00790 and 00848).

The Court considers that the facts and evidence presented before the Court show that the defendants are acting in bad faith. It is common ground that the applicant did not consent to the defendants’ use of the utility models which it owned, and that the defendants infringed the applicant’s exclusive rights as owner of the utility models. The Court agrees with the applicant that both defendants are jointly and severally liable for the violations.

The Court agrees with the applicant that without the use of the utility models belonging to the applicant, defendant 2 would not have been able to produce and defendant 1 sell the houses on the concrete foundation. In light of the foregoing, the Court jointly and severally orders the defendants to pay the applicant EUR 60,000 in value compensation on the basis of royalties.

The decision has not entered into force insofar as it has been appealed to the Tallinn Circuit Court.

Decisions of the Domain Disputes Committee

Case No. 22-1a-357

Opposed domain name: camfil.ee

The Board explains that it is not a representative or acting on behalf of either party in resolving the dispute. The Board shall not independently search the databases for data that would allow the statement of opposition to be satisfied, unless the opponent has provided such information in the statement of opposition or in the evidence attached thereto. Nor can the Commission replace the opponent in explaining as to which earlier right the opponent relies on at all, since only the opponent and their representative have such a right and competence.

The opposition was dismissed.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

Patendibüroo TURVAJA OÜ
Liivalaia 22
Tallinn 10118
Estonia

turvaja@turvaja.ee
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© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 2046-o

Earlier trademark

RIKEN

Opposed trademark

RISEN + kuju

Opposition to registration of the trademark RISEN + device“ (accelerated procedure).

The opponent considers that the applicant’s mark “RISEN + device“ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “RIKEN”. In addition, the applicant’s goods in Class 12 are identical to those covered by the opponent’s earlier mark.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative; thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.


Decision No. 1791-o

Earlier trademarks

INTERFLORA

Opposed trademark

Opposition to registration of the trademark „ interFlower + device.

Similar elements must be given greater weight in the comparison of marks than different elements. Thus, the main focus is on the comparison between the word element “INTERFLORA” and the element “interFlower” in the contested mark.

The Board agrees with the opponents that the comparable word elements/components are visually similar. Although the comparable words do not have an unambiguous meaning, their identical initial component is familiar and understandable to the consumer; the end components -flora and -flower are also significantly close. Thus, the comparable words are also conceptually similar. A word element similar to the earlier mark is contained in the contested mark.

In light of the above, the Board agrees with the opponents that the trademarks are similar in their entirety. This similarity is emphasized by the similar goods and services covered by the marks, as well as by the long history and distribution of the earlier trademark.

The opposition was sustained.


Decision No. 1942-o

Earlier trademarks

Opposed trademark

Opposition to registration of the trademark „VOLTA 1 + device.

The Board considers that the most prominent and dominant component of the comparable marks is the word element “VOLTA”, which appears in large block letters in both the opponent’s and the applicant’s marks, thus immediately attracting the consumer’s attention. The Board agrees with the opponent that the descriptive element “kvartal” (“quarter” in English) is not perceived by consumers as an element identifying the opponent’s services in Class 36. According to the Board, the numerical element “1” in the applicant’s mark is not conspicuous next to the dominant word “Volta” in block letters and might not be clearly perceptible as a number, since it could be seen as only having the effect of a rectangular figurative element.

In addition to the identity of the main word elements of the comparable marks, the marks are similar in terms of design. The fact that the word “VOLTA” is depicted in white in the opponent’s mark and in black in the applicant’s mark does not detract from the similarity in the overall impression given by the marks. Rather, it is possible that such a reversal of colours gives consumers the impression that one mark is a variation of another mark from the same source.

According to the Board, it is common ground that the services in Class 36 covered by the opponent’s and the applicant’s marks are similar and largely identical.

The Board considers that the mere fact that “VOLTA” can refer to, inter alia, the name of a street in Tallinn does not have the effect of excluding the distinctive character of that element. The distinctive character of the element “VOLTA” is further confirmed by the fact that the word mark “VOLTA” is currently registered in the name of the opponent in Class 36. Although this trademark is not an earlier right in relation to the contested trademark, it follows from the fact of registration of this trademark that the Patent Office did not find absolute circumstances precluding legal protection in relation to the word mark “VOLTA” in the trademark examination.

The opposition was sustained.

II Cancellations

Decision No. 1898-o

Opposed trademark

Application for the invalidation of the exclusive right of the proprietor of the trademark JÄÄSULAX JÄÄSULATUSVAHEND + device”.

The proprietor was the first to apply for the contested mark and that mark was registered in their name. The opponent has not referred to any previous trademark registration in Estonia or abroad, nor have they claimed or proved the reputation of the object of the trademark rights allegedly attributed to them.

In addition, the proprietor has provided proof of requiring the opponent to cease using a mark similar to the contested trademark. The Board considers that those claims do not constitute evidence of bad faith on the part of the proprietor in seeking redress for the contested mark, but constitute a legitimate measure taken by the proprietor of the mark to exercise their exclusive right.

As the proprietor’s bad faith in submitting the application has not been proved in other respects, it cannot be considered bad faith that the proprietor registered a trade mark in their own name, the protection of which had not previously been sought by other persons and the ownership of which had not been proved to belong to any other individual.

The fact that the proprietor does not produce any goods does not in itself prove the bad faith of the proprietor, since the trademark proprietor must actually use the trade mark within five years of its registration.

The Board agrees with the proprietor that the trade name “JÄÄSULAX” is not a copyrighted work; however, the complete design of the trademark may constitute copyrighted work. Since the applicant has relied on copyright, it can be presumed that they acknowledge that the complete design of the mark is a work within the meaning of copyright and that there is no dispute in that regard.

However, the opponent has not shown when and on what basis the rights to the packaging design (and trade name) were transferred to them or to a third party. No copyright agreement has been submitted. Therefore, the opponent does not have the rights on which they rely when submitting this application.

It follows from the above that the opponent’s allegations of bad faith on the part of the proprietor are unfounded both in relation to the general bad faith intent and in relation to the alleged earlier trade mark and copyright rights.

The application was dismissed.


Decision No. 1872-o

Opponent’s trademark

Opposed trademark

Nordic Sped

Application for the invalidation of the exclusive right of the proprietor of the trademark Nordic Sped”.

According to the Board, the applicant has not proved the use of the trademark “Nordic Spedition” in the period prior to the filing of the contested trade mark application, let alone its reputation.

On the basis of the evidence adduced, the Board does not consider it necessary to examine the similarity of the contested mark to the opponent’s trade name or the distinctive character of the opponent’s trade name nor to compare the services of the contested mark with the activity of the opponent, since planned activity alone cannot be relied on and only actual commercial use must be taken into account. The link between the business name and the specific business and activities was not properly disclosed at the time of the application.

The Board disregards and completely rejects the proprietor’s allegations concerning the investigation into the opponent’s business in criminal proceedings, as these circumstances are not relevant to the present case.

In assessing the parties’ submissions, the Board notes that the good faith of the owner is presumed and bad faith must be proved at the time of application. The Board acknowledges that, when applying for the contested mark, the proprietor may indeed have been aware of the opponent’s new business name, the start-up of his activities in the transport and forwarding business, and even the design used on his lorries and website. The opponent has thoroughly explained the reasons behind the business dispute concerning the parties and a third company. Although it is not inconceivable that the third company used both lawful and legally correct techniques that are questionable in relation to good commercial practice, these alleged retaliatory measures have not been documented, so they cannot be relied on as evidence to prove the proprietor’s alleged bad faith. Therefore, there is no significant link in the chain depicted by the opponent which links that commercial dispute, which the opponent apparently perceives as an attack on itself and its employees, and the application for the protection of the opposed trademark.

The application was dismissed.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

Patendibüroo TURVAJA OÜ
Liivalaia 22
Tallinn 10118
Estonia

turvaja@turvaja.ee
Phone: +372 6 403 109
Fax: +372 6 403 105

© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1991-o

Earlier trademark

Baojaam

Opposed trademark

Opposition to registration of the trademark „BAO YAM + device.

The Board considers that the visual difference between the comparable marks is present only in the middle of the dominant elements and is less pronounced. Aurally, the marks are even more similar in that the letters “J” and “Y” are pronounced identically. For a foreign-speaking consumer, including a tourist who does not know double vowels in Estonian, the marks may not differ phonetically at all. The Board considers that the words “Baojaam” and “BAO YAM” are semantically meaningless to Estonian consumers, so that the comparable signs are also semantically similar.

Although the applicant’s trademark contains the element “ASIAN RESTAURANT” in addition to the element “BAO YAM”, that element appears in a much smaller font and remains in the background; in addition, it refers directly to the characteristics of the services sought and is therefore not distinctive.

The design elements in the applicant’s mark are also not sufficiently memorable and different from the usual on the market to distinguish the applicant’s mark from the opponent’s earlier mark.

As regards the services in Class 43 covered by the applicant’s and the opponent’s marks, the Board considers that all the comparable services fall within the category of catering services, so that they are of the same type and largely identical.

According to the Board, there is a likelihood of confusion between the marks by the consumer, including the association of the applicant’s mark with the opponent’s earlier mark.

The opposition was sustained.


Decision No. 1996-o

Earlier trademark

MOLECULE

Opposed trademark

Opposition to registration of the trademark M MOLECULE PERFUME SPACE + device“ (accelerated procedure).

The opponent considers that the applicant’s mark “M MOLECULE PERFUME SPACE + device“ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “MOLECULE”. In addition, the applicant’s goods in Class 3 are included in Class 3 of the goods protected by the opponent’s earlier mark.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative, thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.


II Cancellations

Decision No. 1873-o

Opposed trademark

Application for the invalidation of the exclusive right of the proprietor of the trademark vürtsid + device”.

The earlier right which gives the opponent claim for the contested mark is copyright. The opponent has submitted evidence that a sign identical to the contested trademark has been developed for use by the opponent on the basis of a development agreement concluded with the Estonian Academy of Arts (EAA) and has been handed over to the petitioner. According to the annex to the development agreement, ownership rights relating to an eventual trademark were transferred from EAA to the opponent. According to the same annex, the author granted the opponent the exclusive right to apply to the competent authority for the protection of the work, including the registration of the trademark.

Although the Board did not consider the opponent’s use of a sign identical with or similar to the contested mark to be regarded as having acquired well-known character, there is no doubt that the opponent used the sign developed and commissioned by the EAA.

The Board validates the opponent’s opinion that the opponent has not given permission to register the contested trademark in accordance with the procedure prescribed by law.

In the light of the above, the Board considers that the application for registration of the contested mark by the applicants was done in bad faith and therefore constitutes a ground for revoking the exclusive right of the contested mark.

Where a trademark has been registered in the name of its agent or representative without the consent of the proprietor of the trademark, the proprietor of the trademark shall have the right, within five years of becoming aware of the registration of the trademark in the name of the agent or representative, to file an application with the Board for the transfer of the trademark. However, the Board considers that an applicant who does not own a registered or well-known mark identical or similar to the contested mark in Estonia or abroad cannot be considered the “owner of the mark in question”. If the well-known character of the trademark in Estonia had been acknowledged, the situation would have been different.

The trademark was declared invalid; the trademark will be removed from the register.

III Appeals

Decision No. 1971/1972-o

Appeals against the partial refusal to register the trademarks “positional mark taxi” and “positional mark taxi”.

The Board does not agree with the applicant’s reasoning on the non-descriptiveness of the marks in that the descriptiveness of the figurative mark is limited primarily to the vivid representation of existing objects in the mark. Nor does the Board agree with the applicant that, in order for the grid logo to be regarded as descriptive, it should be clear that it is an official symbol. However, the disagreement with the applicant in these aspects is not relevant, since in the present case the non-descriptiveness of the applicant’s marks stems from the obvious fact that the logo resembling a checkerboard grid has no intrinsic link with taxi services.

Should the Patent Office find that the use of checkerboard grids as such has become commonplace in taxi services, it is necessary to assess separately whether the logo specifically contained in the applicant’s marks is also customary.

The Board acknowledges that the mere existence of earlier trademark registrations cannot automatically justify the registration of later marks. However, in the present case, it must be borne in mind that a sign which is essentially identical to the essential element of the “positional mark taxi” has been registered for more than 25 years. In addition, the figurative mark in question is registered in black and white, which means, under the trademark law in force at the time of registration, that it confers the exclusive right to prohibit the use of the mark by third parties in any combination of colours.

In addition, if, after considering all the circumstances, the Patent Office finds that the applicant’s grid logo is customary, the Patent Office must assess whether the applicant’s trademarks may have acquired distinctive character or become well-known as a result of use by the filing date.

In addition to the foregoing, the Board considers that the refusal of the Patent Office to convert the type of marks applied for from a positional mark to another type is unjustified on the ground that the reason for that refusal had not been sufficiently explained to the applicant.

The appeal was sustained.

Court Decisions

Civil Chamber of the Supreme Court, Case No. 2-18-3445

Application for termination of the infringement of the exclusive right of the owner of the industrial design and for prohibition to exercise the design right.

The applicant is a well-known manufacturer of motor vehicles, including Mercedes-Benz, which owns a large number of registered designs. The defendant is an Estonian company which wholesales motor vehicle parts and accessories.

On 5 February 2018, the Tax and Customs Board informed the applicant that 16 alloy wheels designed by the applicant had been seized during the examination of the goods. According to the notice of the Tax and Customs Board, the recipient of the goods is the defendant.

The dispute concerns whether the so-called “repair condition” applies to the defendant’s activities in selling replica wheels. According to the Community Designs Regulation, a design which forms part of a complex product which has been used to improve that complex product in order to restore it to its original appearance is not protected as a Community design.

The Supreme Court reiterated the Chamber’s position at the previous hearing, noting that in the Chamber’s view it could not be inferred from the sale of a set of wheels that they were sold for purposes other than repair and therefore the “repair condition” did not apply. The Chamber considers that even in a situation where the defendant sells the copy wheels only as a set, the application of the “repair condition” would not be excluded if the sale of the wheels is to restore the original appearance of the car and complies with the “repair condition”.

The parties further dispute whether the difference in offset of 4-5 mm between the rims imported by the defendant precludes the application of the “repair condition”. The difference in dimensions generally means that the replacement part is not visually identical to the original part, precluding recourse to the “repair condition”. However, in the present case, the courts have found (and the parties do not dispute) that the difference in wheel offset is not visually appreciable and that the defendant’s copy wheels are not visually different from the applicant’s original rims.

In addition, the parties dispute whether the district court correctly rejected the request for the destruction of the rims and whether the information added to the defendant’s website fulfilled the required duty of care.

The Chamber further finds that the circuit court has reasonably come to the conclusion that the notices of the defendant are sufficient to consider the notification obligation forming part of the duty of care to be fulfilled. It is understood from the notices that the product being sold is not an original product, contains a design that belongs to someone else, and may only be used to repair another product to restore it to its original appearance.

In the appeal in cassation, the applicant also alleges that the district court erred in partially dismissing the applicant’s claim to oblige the defendant to refrain from future violations. The applicant submits that the district court should have worded the resolution on that claim in such a way that the expression “visually identical” was used instead of “visually similar”. The Chamber decided to amend the resolution of the circuit court decision accordingly.

In the view of the Chamber, the district court rightly held that, instead of destruction, it was sufficient to oblige the defendant to refrain from infringing the plaintiff’s rights in the future.

The appeal in cassation was partially upheld.


Pärnu County Court, Case No. 2-20-6075

Application for damages and for the obligation to refrain from using the trademarks “Bad Boys Blue” and “The Real Bad Boys Blue” in the future.

The defendant organized an event called “15/02 Bad Boys Blue in Pärnu Kursaal!”. The applicant’s trademarks “Bad Boys Blue” and “The Real Bad Boys Blue” were used to promote the event. The Court finds that the defendant’s assertion that the defendant organized and advertised only the appearance of Herb McCoy is untrue. According to the evidence presented to the court, neither the poster nor the Facebook post refers to Herb McCoy as a former soloist in The Real Bad Boys Blue. The way in which the defendant’s event was advertised allows it to be unequivocally concluded that the defendant deliberately sought to give the impression to the public that there was a well-known band and not a former member. Thus, the defendant used the applicant’s trademarks for profit without the latter’s consent.

The defendant must have known that they were not entitled to use the names registered as trademarks without the consent of the trademark proprietor and they must have been aware that they were infringing the applicant’s rights. The defendant’s conduct therefore constitutes an intentional infringement of the applicant’s rights.

The applicant has not adduced any evidence or shown that the defendant continues to infringe the applicant’s trademarks. On the contrary, the applicant’s representative explained at the hearing that, on the same day as the applicant lodged their application against the defendant, the defendant had removed all references to “Bad Boys Blue”. The applicant has not proven that the defendant intends to advertise a new concert or other event using the name “Bad Boys Blue” or “The Real Bad Boys Blue”.

The action was partially upheld.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

Patendibüroo TURVAJA OÜ
Liivalaia 22
Tallinn 10118
Estonia

turvaja@turvaja.ee
Phone: +372 6 403 109
Fax: +372 6 403 105

© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1929-o

Earlier trademarks

FACEBOOK

Opposed trademark

Opposition to registration of the trademark „DEFYING THE TIME ATHLETICS FOR MASTER ATHLETES FACEBOOK TIPS TRICKS CAMPS CHAMPS + device“.

The Board considers that it has been established that the opponent is an indisputably well-known undertaking which owns a distinctive and well-known mark in various designs, which has also been repeatedly registered as earlier marks. Although the element “FACEBOOK” is used within the contested mark as part of the word element, this does not preclude similarity between the opposed marks, since the earlier mark is used in identical form and the rest of the word mark is predominantly descriptive of services.

Given the similarity of the marks and the services, as well as the attention of the average consumer, it can be concluded that the consumer, seeing the contested mark with the word element “FACEBOOK” in it, may believe that the services offered come from the opponent. It is also likely that the use of a well-known mark within the contested mark may lead to abuse of the distinctive character of that mark and / or damage its distinctive character and reputation.

In view of the applicant’s removal from the commercial register, the contested application has become an “orphan property” for which no one is responsible and, as there is a reasonable risk of infringing the opponent’s exclusive right, the refusal to register the contested mark must be considered well founded.

The opposition was sustained.


Decision No. 1975-o

Earlier trademarks

KV24

Opposed trademark

Opposition to registration of the trademark ekv24.ee + device“.

The Board finds that the opponent has sufficiently substantiated the similarities between the applicant’s trademark “ekv24.ee + device” and the opponent’s trademarks “KV24” and “KINNISVARA 24 + device”. The Board agrees with the opponent that the element “.ee” in the applicant’s trademark is an extension referring to the Estonian top-level domain, for the use of which the applicant does not have the exclusive right.

The Board also agrees with the opponent that the applicant’s mark is similar to the opponent’s earlier mark “KINNISVARA 24 + device”, in particular as a result of the use of the applicant’s figurative element and, to a certain extent, the number 24.

The Board further agrees with the opponent that the services in Classes 35 and 36 covered by the applicant’s mark are identical to those covered by the opponent’s earlier marks.

Taking into account the similarity of the applicant’s trademark “ekv24.ee + device” with the opponent’s trademarks “KV24” and “KINNISVARA 24 + device” and the identity and similarity of the relevant services, the Board considers that there is a likelihood of confusion by the consumer.

The opposition was sustained.


Decision No. 1993-o

Earlier trademark

MOLO

Opposed trademark

MOLO

Opposition to the grant of legal protection for the trademark MOLO“ (accelerated procedure).

The opponent considered that the applicant’s mark “MOLO” is identical to the opponent’s earlier mark “MOLO”, which has been protected in relation to partly identical and partly similar goods and presents a likelihood of confusion by the consumer, including association with the earlier mark.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative, thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.

II Cancellations

Decision No. 1836-o

Opposed trademark

MOLO

Application for the invalidation of the exclusive right of the proprietor of the trademark “JÕULUGALA”.

The Board considers that the mark “JÕULUGALA“ (Christmas gala in English) is not inherently distinctive in relation to the services in Class 41 covered by the registration.

The Board agrees that the mark “JÕULUGALA“ does not fulfil the main function of a trademark, which is to guarantee to end consumers a certain origin of the goods and services covered by said mark. The main consideration in the present case is therefore whether the evidence adduced before the Board is sufficient to establish that the mark “JÕULUGALA“ has acquired distinctive character through use.

According to the evidence, the mark used by the proprietor has not simply been “JÕULUGALA“, but the combined mark “JÕULUGALA + device“ with some variations in design aspects over the years. The Board does not rule out the possibility that the proprietor’s figurative mark “JÕULUGALA + device“ may be distinctive, but that does not justify the proprietor’s exclusive right to the mark “JÕULUGALA“.

The materials provided by the proprietor constitute normal activities related to the organization and conduct of events. In the Board’s view, that evidence does not, taken as a whole, support the conclusion that there has been a change in the perception of the mark “JÕULUGALA“ as a trademark of a particular person among consumers of entertainment events or other individuals. The Board notes that other persons in Estonia also use the sign “JÕULUGALA“ in the names of their events.

The Board confirms that the descriptive use of the mark “JÕULUGALA“ is also evidenced by the fact that the proprietor has marketed their events to other language audiences by translating the mark into the respective languages ​​– “CHRISTMAS Gala”, “JOULU Gaala“ (in Finnish),  „РОЖДЕСТВЕНСКИЙ гала-праздник “ (in Russian) . Although translation of the mark is not prohibited, the Board considers that, in the present case, it points to the proprietor themselves perceiving the mark “JÕULUGALA“ as referring to the type of services.

The trademark was declared invalid.

Decisions of the Domain Disputes Committee

Case No. 21-1a-351

Opposed domain name: postiindeks.ee

As described on the registrant’s website, the registrant uses the domain name to provide a zip code lookup service.

The opponent (AS Eesti Post, Estonian Post in English) states that it holds the license required for the provision of the universal postal service. According to the opponent, the word “postiindeks” (postal code in English) has a well-established link with the postal service. The opponent considers that the domain name is identical to its earlier right and has been registered in bad faith.

According to the Committee, the opponent has not established the existence of an earlier right. The management and use of postal codes is not an earlier right within the meaning of the regulations. As the opponent has no prior right, the Committee will not further examine the grounds for upholding the opposition.

However, the Committee adds, as a side note, that postal codes are not something which belongs to the opponent. According to the Postal Act, the activity license of a universal postal service provider is granted by public tender for five years. Thus, the management of postal codes by the opponent is of a temporary nature and cannot show that the postal codes belong to the opponent.

In addition, since the registrant’s website has a credible link to the domain name, their actions could not be considered to be in bad faith. Selling advertisements and online marketing are not malicious activities and do not damage the opponent’s reputation.

The opposition was rejected.

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Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1853-o

Earlier trademarks

LIISU

Opposed trademark

Liisu

Opposition to registration of the trademark Liisu”.

The Board considers that the evidence submitted by the opponent shows that the opponent has been using its trademarks in Estonia in relation to dairy products since May 2017. Nevertheless, the evidence does not allow to conclude that the trademarks “LIISU” and “Liisu + device” have become well-known.

The opponent’s products had been on the market for approximately one year and five months at the time of the applicant’s application for registration of the trademark “Liisu”. Although it cannot, in principle, be ruled out that a trademark may become well known during a short amount of time, in the present case there is no evidence to suggest that the opponent’s activities were so intense as to quickly reach the minds of a significant number of persons in the sectors concerned.

Although the opponent has provided the Board with information on advertising costs, the evidence does not show what specific steps have been taken to promote the “LIISU” marks for the corresponding amounts of money. Nor can it be inferred from the evidence that the opponent’s marks have achieved a high level of recognition among consumers as a result of the aforementioned advertising.

It is clear that the opponent’s evidence does not address the sale of the opponent’s “LIISU” products by small undertakings and/or their awareness of the opponent’s trademarks. Thus, it has not been established that the vast majority of the dairy distribution sector or the relevant business sector is familiar with the opponent’s marks.

The opposition was dismissed.


Decision No. 1839-o

Earlier trademark

Opposed trademark

VOLVOX

Opposition to registration of the trademark VOLVOX”.

The Board agrees with the opponent that the word elements “VOLVO” and “VOLVOX” are similar and that, consequently, the comparable marks as a whole are visually, aurally and conceptually similar, despite the fact that the letter “X” is not common in the Estonian language.

The Board notes that even if the applicant has developed its brand on the basis that “volvox” is an algae, an organism whose members can deliver independently but form a more efficient group together – and thus refers to the functioning of the service provided by the applicant and its team –, it is unlikely that the average consumer of the applicant’s services would establish such a link solely on the basis of the trademark “VOLVOX”. The Board considers it even less likely that the Estonian consumer would divide the parts of the mark “VOLVOX” into the German term “voll” (meaning “complete”) and the Latin term “vox” (meaning “voice”, “competence”, “jurisdiction”), thereby interpreting the applicant’s trademark as “complete competence”.

The Board considers that such an approach is artificial and that the applicant’s trademark does not give rise to such associations in reality.

The Board observes that, although the wording of the applicant’s and the opponent’s lists of services is not identical, all the services covered by the applicant’s trademark application are covered by or closely linked to the aforementioned opponent’s services.

The opposition was sustained.


Decision No. 1883-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark LUMENA KINNISVARABÜROO + device”.

The Board considers that the dominant element of the contested mark, both visually and conceptually, is the word “LUMENA”. The design element merely emphasizes the sign’s connection with the services provided, in particular in conjunction with the word “KINNISVARABÜROO” (real estate agency).

The word “lumina” also dominates the earlier trademark. The Board acknowledges that the word “KVARTAL” (quarter) does not indicate the nature of the services to the consumer as clearly as the element “KINNISVARABÜROO” of the contested mark. However, this element is practically inconspicuous visually, very common in the context of immovable property services and alludes to the type of service. Thus, it cannot be viewed as a dominant element of the earlier mark as a whole.

The opponent considers the acute-shaped element to be a stylized dot on the letter “i” and has argued that the emphasis on pronunciation is identical in the comparable marks. The Board agrees that the argument is well founded and notes that there are grounds for considering the pronunciation of the dominant verbal elements of the comparable marks to be rather similar or even identical.

The Board observes that the word “lumena” is an Estonian word with a meaning, namely the primitive singular form of the word “lumi” (snow). Nevertheless, the Board agrees with the parties in that the word in this form, never used without context, does not make the marks conceptually comparable or different.

The opposition was sustained.


Decision No. 1881-o

Earlier trademark

ÖKOSEPT

Opposed trademark

Ecosept

Öko-Pharma OÜ has applied for the registration of the contested trademark on 13.02.2019. On 20.04.2020, the application for the contested mark was transferred to OÜ Ecosept and an entry has been made in the Register of the Patent Office.

Despite the fact that the individual to whom the application has been handed over and who intervenes in the proceedings before the Board in place of the previous applicant is a new individual, everything resulting from both the application and the applicant’s status can be attributed to them.

In the present proceedings, the new applicant has submitted their written position on 26.05.2020, which is one day later than the deadline of 25.05.2020 set for the applicant. The Board therefore agrees with the opponent that the applicant’s position was not received within the allocated timeframe. However, the Board does not agree that the applicant’s position should therefore be disregarded.

The Board considers that there is no doubt as to the identical or similar nature of the goods. The Board finds that the marks are visually similar, despite the differences in the beginning of the words, and that it is also likely that the consumer may confuse the trademarks aurally.

The Board considers that a consumer who is sufficiently informed and able to make connections will not distinguish whether the applicant has tried to project economy or environmental friendliness with their mark. As the average Estonian consumer is able to understand foreign languages at least to a basic degree, and in these languages the prefix “öko-“ corresponds to the prefix “eco- / eko-“, it is highly likely that these marks will be confused because they are conceptually identical.

The applicant has stated that they have the primary right to register trademarks and patents with their business name in the Republic of Estonia. An earlier business name may have the effect of challenging and revoking a later trademark, but the existence of a business name does not in itself confer any prerogatives.

The opposition was sustained.

Decisions of the Domain Disputes Committee

Case No. 21-1a-347

Opposed domain names: hhprefab.ee; happyhomemajad.ee; jaapanimaja.ee

The domain names hhprefab.ee and happyhomemajad.ee were transferred to the opponent.

The opposition to the domain name jaapanimaja.ee was dismissed.

The production of houses with the designation “Jaapan” by the opponent and the alleged reputation of this product do not infer the opponent an earlier right, as it is not a registered trademark in Estonia, the name of a natural person, the name of a legal person registered in Estonia, nor the same of a state, local government or their agency, nor of an international or intergovernmental organization.

The Board agrees with the opponent that the domain name hhprefab.ee is identical to the opponent’s business name, i.e. their earlier right. The Board also agrees that the domain name happyhomemajad.ee is misleadingly similar to the opponent’s registered trademark “Happy Home”.

In its reply, the registrant has not indicated any specific right or legitimate interest in the registration of the domain name hhprefab.ee, the absence of which is confirmed by the registrant’s consent to transfer it to the opponent.

With regard to the domain name happyhomemajad.ee, the registrant has indicated in general terms the intention to use it in relation to the registrant’s holiday accommodation. The Board considers that the registrant’s claims regarding this intention are vague and no evidence has been submitted to that effect. The fact that the registrant has registered the domain name hhprefab.ee on the same day as the domain name happyhomemajad.ee confirms the lack of coincidence in the registration of these domain names and indicates the intention to take advantage of the reputation of the opponent and their earlier right.

The opposition was partially sustained.


Case No. 20-1a-344

Opposed domain names: bobcatbalti.ee; bobcat-balti.ee; bobcatrent.ee

The domain name bobcatrent.ee was transferred to Opponent 1, Doosan Bobcat EMEA s.r.o.

The domain names bobcatbalti.ee and bobcat-balti.ee were transferred to Opponent 2, OÜ Bobcat Balti.

The Board is of the opinion that the dominant element “BOBCAT” featured in the contested domain names is identical to the earlier rights of the opponents – the trademarks of opponent 1 and the business name “OÜ Bobcat Balti” of opponent 2.

Being aware of the existence of the trademark and the business name, the registrant had to understand that by combining the trademark of opponent 1 with a generic reference, or by using the business name of opponent 2 in its own domains, meanwhile offering products of other trademarks through it, may be reasonably resented by the proprietor of the “BOBCAT” trademarks. To avoid this, the registrant could have consulted and sought the consent of the trademark and/or business name owners before registering the disputed domains.

The registrant is not known by the domain names and did not use them before the end of 2020. There is no evidence that the registrant has the rights to the elements “BOBCAT” or “Bobcat Balti” in Estonia or outside Estonia, or that the registrant themselves is well-known for the disputed domain names. Therefore, according to the Board, the registrant has not proven the right to use the trademarks or business name, or the existence of a legitimate interest to this end.

Given that the registrant has specifically chosen “BOBCAT” trademarks for their domain names and/or registered domain names containing the opponent’s business name, it is plausible that the registrant is attempting to unduly exploit the reputation of the trademark and of the opponents.

The opposition was sustained.

Court Decisions

Civil Chamber of the Supreme Court, Case No. 2-14-6942

The applicant – worldwide organization representing trademark proprietors – has brought an action for termination of the infringement of the trademark proprietor’s rights, for future infringement, and for damages.

According to the applicant, the defendant was aware that there was an illegal sale of counterfeit goods on the websites on which they provided the service. The scale and focus of the defendant’s activities on counterfeit traders allegedly demonstrated their willingness to provide such a service.

The defendant disputed the claim, stating that they had not sold counterfeit goods or used the image of the trademark, and had not unlawfully caused the applicant damage which could be regarded as loss of income. According to the defendant, they were not aware of the content of the internet sites or of the identity of the provider of the web-hosting service.

The Chamber agrees with the courts that the defendant was obliged, from the moment when they were informed of the illegal activities of the persons directly infringing the exclusive rights of the trademark owners, to prevent the infringement of the trademark owners’ rights on the websites indicated in the application. By failing to fulfil its turnover obligation, the defendant knowingly and intentionally contributed to the unlawful conduct of the persons directly infringing the trademark proprietors’ exclusive right, and must therefore be regarded as contributing to the infringement of the trademark proprietors’ exclusive right.

Despite the fact that the courts were right to hold the defendant jointly and severally liable for the damage caused to the trademark proprietors jointly with the persons directly infringing the trade mark proprietors’ exclusive rights, the courts did not award damages in favour of the applicant. The Chamber is of the opinion that the courts have based their claim for compensation for loss of income on the rules for calculating specific actual damage, and have not taken into account the specifics of determining compensation for loss of income caused by trademark infringement. The Chamber therefore considers it justified to refer the matter to the county court for a new hearing in the annulled part.

The applicant also claims that the courts erred in dismissing the claim for non-infringement. The Chamber does not agree. The Chamber, like the circuit court, considers that, in upholding the action, the court must be able to determine which specific actions the defendant must refrain from, but this is not possible on the basis of the applicant’s claim.

The decisions of the Circuit Court and the County Court were partially annulled due to incorrect application of the substantive law norm, and the matter was sent back to the County Court.

The appeal in cassation was partially upheld.

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Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1823-o

Earlier trademark

Opposed trademark

NEO

Partial opposition to registration of the trademark NEO”.

The Board agrees with the opponent that the dominant part of its earlier mark is the word element “NEO”. Given that the element “NEO” is the only and therefore the dominant element in the applicant’s mark, the comparable marks in the present case are, in the Board’s view, visually, aurally and semantically very similar. The Board also considers that the comparable goods of Class 33 are identical and of the same kind.

Given the similarity of the applicant’s mark “NEO” to the opponent’s mark “FACUNDO NEO + device” and the similarity of the comparable goods, the Board considers that there is a likelihood of consumer confusion in the present case, including association of the applicant’s mark with the opponent’s earlier mark.

The opposition was sustained.


Decision No. 1928-o

Earlier trademark

Opposed trademark

Opposition to the grant of legal protection for the international trademark Lulu + device“ (accelerated procedure).

The opponent considered that the comparable marks were visually and aurally identical. The consumer is unlikely to be able to distinguish between the marks “LU-LU” and “LULU”.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative, thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.


Otsus nr 1925-o

Earlier trademark

Opposed trademark

Opposition to the grant of legal protection for the international trademark STYLEX + device“ (accelerated procedure).

The opponent considered that the comparable marks were similar, intended to be used for identical and similar goods in Class 25 and that there was therefore a likelihood of confusion, including association between the two marks.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative, thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.


Decision No. 1827-o

Earlier trademarks

Opposed trademark

Opposition to registration of the trademark XISHANGXI + device”.

Given the similarity of the applicant’s mark “XISHANGXI + device” to the earlier marks at issue and the identity of comparable goods in Class 34, the Board considers that there is a likelihood of consumer confusion in the present case, including association of the applicant’s mark with the opponent’s earlier marks.

Although the word elements “SHUANGXI” and “XISHANGXI” may have an unfamiliar effect on Estonian consumers, the consumers are even less familiar with other elements of the combined marks, such as the hieroglyphs. The Board therefore considers that the words “SHUANGXI” and “XISHANGXI” in the Latin alphabet are the elements which would enable the Estonian consumer to identify the comparable marks and the goods covered by them in a market situation. According to the Board, the aforementioned word elements are, in general, similar.

For the Board, the correlations in the design elements reinforce the overall impression of similarity given by the comparable marks as a whole.

The Board also considers that the similarity between the words “SHUANGXI” and “XISHANGXI is clearest upon pronunciation. According to the Board, the aural sound of the marks is more important than average in the sale of tobacco products. In the present case, since the comparable goods are to be regarded as identical, that consideration increases the likelihood of trade mark confusion.

The opposition was sustained.

Decision No. 1830-o

Earlier trademark

Opposed trademark

KARMA

Opposition to registration of the trademark KARMA”.

The Board agrees with the opponent that the dominant and distinctive element of their mark is, in particular, the word “KARMA”. Thus, in the present case, the dominant and distinctive elements of the comparable marks are identical and, consequently, the marks as a whole are phonetically, visually and semantically similar.

The Board agrees with the opponent that the goods and services covered by the opponent’s and the applicant’s marks are of the same type. The Board contends that the opponent has duly substantiated that light alcoholic beverages may be consumed in the same way as non-alcoholic beverages, including as thirst quenchers. Thus, the consumer base for alcoholic beverages and non-alcoholic beverages may overlap.

The retail and wholesale services mentioned in the applicant’s trade mark application may include, inter alia, the retail and wholesale of alcoholic and non-alcoholic beverages, so that these services may be considered to be of the same type as the goods of the opponent.

The opposition was sustained.

One of the members of the Board presented a dissenting opinion, arguing that, although the signs in question had certain similarities, they could not, taken as a whole, be regarded as sufficiently similar to suggest that there was a likelihood of confusion. In the case of the opponent’s mark, it is not possible to agree that the clearly dominant element of that mark is the word “KARMA” – the opponent’s mark consists of three elements which are prominent to the consumer.


Decision No. 1832/1833-o


Earlier trademark

ANIMAL

Opposed trademarks

Opposition to registration of the trademarks ANIMAL + device” and “A Animal + device”.

The Board agrees with the opponent that, as a result of the use of the element “ANIMAL”, the applicant’s marks “ANIMAL + device” and “A Animal + device” are visually, aurally and conceptually similar to the opponent’s mark. The Board does not share the applicant’s views that the applicant has sought to reduce the importance of the element “ANIMAL” in its trademarks through the use of various additional elements. The Board considers that the applicant’s arguments in that regard are artificial and do not correspond to the real overall impression of the marks.

The Board does not agree with the applicant’s claim that the opponent’s mark is less distinctive because the word “ANIMAL” is frequently used for goods in Class 25 and appears in many registered EU marks. The Board considers that the mere presence of the word “ANIMAL” in registered trademarks is not in itself sufficient to draw conclusions on the distinctiveness of the word.

The Board considers that, irrespective of whether and in whose favor disputes in other regions have been settled by in-force decisions, the mere presence of these disputes shows that the smooth coexistence of the opponent’s and the applicant’s marks cannot take place.

In the present case, it is common ground that the goods in Class 25 covered by the applicant’s marks are identical to those covered by the opponent’s earlier mark.

The oppositions were sustained.


II Appeals

Decision No. 1858-o

Appeal against the partial refusal to register the trademark “AVIATOR”.

According to the Board, the Patent Office has not substantiated the refusal to register the trademark in respect of “spectacle boxes and cases”. The grounds for refusing registration must be evident from the decision and sufficiently clear to enable the applicant to decide on the prospects of an appeal.

The Board considers that, if the relevant public is the average Estonian consumer, it would be contradictory to create an artificial link between spectacles (including sunglasses, sports spectacles and masks, and optical instruments in general) and the mark “AVIATOR”, as if these goods were specifically targeted for pilots. According to the Board, the decision of the Patent Office to rely on pilots as a target group is not justified.

The Board agrees with the appellant that not all information available on the Internet on the use of the mark is relevant for the assessment of Estonian consumer perceptions. Global novelty is not a criterion for trademark protection.

The appeal was sustained.

Decisions of the Domain Disputes Committee

Case No. 20-1a-338

Opposed domain name: hupoteeklaen.ee

The Board concluded that the circumstances of the present dispute fell outside its competence.

The opponent owns earlier rights, namely the business name “Hüpoteeklaen AS” and valid trademarks registered in Estonia, in which the word “hüpoteeklaen” (mortgage loan) dominates.

The Board considers that the words “Hüpoteeklaen” and “hupoteeklaen” are misleadingly similar.

However, the Board was not able to establish that the registrant’s intent was to mislead consumers or to damage or exploit the reputation of the opponent or their earlier rights. The Board highlighted the importance of the non-distinctiveness and descriptiveness of the elements “Hüpoteeklaen” and “hupoteeklaen”, the use or acquisition of the rights of which is not directly restricted, nor does it infringe or violate any prior rights.

The Board considers that the information provided on the registrant’s website does not lead to the conclusion that the registrant’s intention is to create false impressions of similarity with the opponent, thereby benefiting from the reputation of the opponent.

The Board considers it necessary to emphasize that the circumstances of the present dispute fall outside its remit. The Board is not competent to assess whether the registrant’s domain name infringes the opponent’s earlier rights. This dispute is not a case of domain name hijacking, but is primarily a trademark and business name infringement dispute that should be settled in court proceedings.

The opposition was rejected.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
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© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1860-o

Earlier trademark

Opposed trademark

Seven Old Barrels

Opposition to registration of the trademark “Seven Old Barrels”.

The Board notes that the applicant has not acknowledged receipt of the opposition.

However, it is not reasonable to assume that at the end of the trademark registration procedure, the applicant’s contact details will become irrelevant, i.e. the applicant will “disappear” when their application is contested after two months. In essence, this would amount to a presumption of bad faith on the part of the applicant, which would not be acceptable.

The Board emphasizes the importance of the applicant’s experience a few years ago with a different opposition in which the applicant actively participated.

The Board finds that the opponent’s assertion that the registration of the contested mark “Seven Old Barrels” in Class 33 is confusingly similar to the applicant’s earlier mark “Old BARREL + device” is not manifestly unjustified.

The opposition was sustained.


Decision No. 1860-o

Earlier trademark and business name

KIPSIVALU OÜ

Opposed trademark

Opposition to registration of the trademark “Kipsivalu ROXMAR + device“.

The Board considers that the term “kipsivalu” (plaster casting) is inherently descriptive and non-distinctive in the context of construction services in Class 37. The fact that a word does not exist in dictionaries does not exclude the potential descriptive nature of said word. Trademark law does not provide special rights for persons who are the first to develop or introduce descriptive and indistinguishable marks.

The Board considers that the advertising and sale of the goods and services covered by its trademark is a natural part of the economic activity of any undertaking, and does not necessarily demonstrate that the trademark is well-known.

Although six Estonian legal entities have signed letters of confirmation stating, inter alia, that the mark “KIPSIVALU” is a distinctive mark of the opponent’s services, it is not possible to draw conclusions about the wider perception of the relevant sectors in Estonia on the basis of merely six statements. In the Board’s view, it is also clear that the individuals in question did not express their perceptions spontaneously, but that they were assisted in that regard.

The Board notes that the Commercial Code does not impose the same conditions and restrictions on the choice of a business name as the Trade Mark Act does upon trademarks. Thus, the registration of a business name in the commercial register does not in itself guarantee that the mark in question is capable of functioning as a distinctive trademark for the goods or services of the undertaking concerned.

The opponent is not entitled to restrict the use of the mark “kipsivalu” for third parties whose services are related to plaster casting.

The opposition was rejected.


Decision No. 1852-o

Earlier trademark

PARK

Opposed trademark

Opposition to registration of the trademark “PARK HOTELL VILJANDI + device”.

According to the Board, the applicant has presented convincing evidence from which it can be concluded that the word “PARK” is an element with a very low degree of distinctiveness in the context of hotel and accommodation services. The use of the word “PARK” in connection with accommodation services is common and customary in Estonia, and does not constitute a mark that can be associated only with the opponent.

The element “PARK” may create an association for consumers of accommodation services that the correspondingly marked hotel or other accommodation establishment is located in or near a park, or that it has a view of a park, which in turn refers to the characteristics of the service and not so much to the service of one particular company. Nor does the Board consider irrelevant that the case-law of the Court of Justice of the European Union has already analysed the word element “park” in the context of accommodation services and found it to be particularly suggestive or even descriptive (T-510/14 and T-536/14, paragraph 76).

The most dominant and distinctive component of the applicant’s combined mark is the representation of the building at the top of the mark, which is also the most visually prominent element in the applicant’s mark. The opponent’s mark does not contain such or a similar element. The trademarks “PARK” and “PARK HOTELL VILJANDI + device” are not similar in their entirety to such an extent that consumers could be misled.

The opposition was rejected.

II Appeals

Decision No. 1846-o

Appeal against the partial refusal to register the trademark “RAHAPÄEVIK”.

The Board agrees with the Patent Office that the trademark “RAHAPÄEVIK” (money diary) is inherently descriptive of the relevant goods and services, and inherently non-distinct.

Nevertheless, the Board considers that the appellant’s complaint is well-founded in its entirety. The unlawfulness of the decision of the Patent Office is evident in particular with regard to the fact that the examination proceedings omitted the web links submitted as evidence by the appellant, and with regard to the fact that the Patent Office did not properly analyse the claim of the mark being well-known.

The Patent Office should not have simply ignored the web links presented as evidence in the examination proceedings, but the appellant should have been given an explicit opportunity to present all the evidence in a permanent secure form instead of the links. Even if the evidence provided does not meet the requirements clearly set out in the legislation, the principle of good administration should, as a general rule, inform the party concerned of the deficiency and give them a deadline to remedy said deficiency.

In a situation where the appellant relies on the reputation of the mark in the business sector dealing with those goods or services, the Patent Office must assess, inter alia, whether the business sector concerned can be limited to members of the Banking Association, as asserted by the appellant, or if it should be considered more broadly.

The appeal was sustained.


Decision No. 1834-o

Appeal against the partial refusal to register the trademark “IT365″.

The Board considers that, in order for a service to be considered to fall within the field of information technology, the name of the service itself does not have to include a reference to information technology. It is sufficient if the services in question are traditionally provided in the field of information technology.

The Board agrees with the Patent Office that the element “365” is generally associated with the meaning of the year by the average consumer and considers that, in particular in conjunction with the element “IT”, the mark gives the impression of referring to year-round IT services. Even if ensuring the day-to-day availability of IT services should not be widespread in practice, the fact that the mark “IT365” conveys the message that IT services are available 365 days a year remains unchanged. If, in practice, the appellant’s services are not available 365 days a year, the potential misleading nature of the sign could come into question instead.

Whether a trade mark is one-of-a-kind, unique or original, it must nevertheless be distinctive. Regarding the appellant’s mark, the Board considers that those conditions have not been met.

The appeal was rejected.


Decision No. 1817-о

Appeal against the partial refusal to register the trademark “CARAVAN”.

The Board found that, although the Patent Office correctly acknowledged that the word “karavan”/“caravan” could be used in the meaning of “camping caravan” in Estonian, on the basis of the evidence gathered during the trade mark examination procedure it has not been sufficiently considered why, in the context of use, the appellant’s trademark cannot be granted legal protection in respect of the refused Class 39 services.

In the absence of a well-established market for travel services for caravan-type vehicles, consumers are unlikely to have any particular expectation with regard to the mark “CARAVAN” that the travel services provided under that mark will be linked to travel services for caravan-type vehicles.

According to the Board, the service of organising visas, passports or other travel documents does not have the characteristics of travel management services specifically for caravan-type vehicles. Consumers therefore have no expectation that, in the context of the service of organising visas, passports or other travel documents, the sign “CARAVAN” will be used to designate the service of organising documents specifically for caravan travel.

The Patent Office has not sufficiently substantiated the decision to refuse registration. In order to refuse in circumstances excluding legal protection, the Patent Office must have more weighty reasons and evidence than merely those arising from the fact that consumers can organise caravan trips themselves.

The appeal was sustained.

Decisions of the Domain Disputes Committee

Case No. 20-1a-336

Opposed domain name: tervisekassa.ee

The Board found that the transfer of the domain name tervisekassa.ee to the opponent was not justified.

It emerges from the dispute that the Estonian Health Insurance Fund (Eesti Haigekassa) acquired a shareholding of Tervisekassa OÜ through a related party in order to secure the name change of “Eesti Haigekassa” to “Eesti Tervisekassa”.

The opponent found that “Tervisekassa” is a translation of the name of Eesti Haigekassa in English (Estonian Health Insurance Fund), but in the Board’s opinion such an approach is incorrect. As this is the official name of the authority in English, it is not reasonable to assume that it will be translated back into Estonian any other way than using the official Estonian name of the authority, “Eesti Haigekassa“. In addition, even the direct translation would be different from the suggested “Tervisekassa”.

The Board considers that the discussions in 1991 before the Riigikogu (Parliament) regarding the possibility of choosing “Tervisekassa” as the name of the Estonian Health Insurance Fund did not matter when registering the Domain Name in 2013, nor now, at the time of the decision.

The Board considers that the opponent’s conduct may instead indicate an attempt of reverse domain name hijacking.

The opposition was rejected.

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Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1794-o

Earlier trademark

NutiAkadeemia

Opposed trademark

Opposition to the registration of the trademark „nutiakadeemia.ee + kuju“

It is clear that the use of an identical or distinctive mark in the same field by two parties is detrimental to the economic interests of both of them and causes confusion among consumers. Therefore, the law provides a temporal advantage to the first user of the trademark.

Although not to the majority of the Estonian population, the use of the trademark by the opponent is known to the users of their service and through the media more widely. The use of the mark has been so intensive that the Patent Office has considered it to be sufficiently distinctive for the services in class 41 and the Board has found it sufficient to consider the mark to be well known and the subject of an exclusive right to designate at least some services.

The Board considers that, since the applicant was or should have been aware of the mark used by the opponent at the latest at the time of the contested trademark application, it nevertheless applied for an identical or substantially indistinguishable mark to designate sufficiently similar or related goods use of its earlier mark, the opposition is admissible in respect of the whole of class 16.

The opposition was sustained.


Decision No. 1813-o

Earlier trademark

NutiAkadeemia

Opposed trademark

NutiAkadeemia

Opposition to the registration of the trademark „NutiAkadeemia“

The opponent has not specified on the basis of which provisions of the Trademark Act the opposition has been filed. Although the Board can interpret the opponent’s purpose and the legal basis of the opposition, it cannot fulfill the opponent’s role in substantiating its allegations.

The opposition was dismissed.

II Appeals

Decision No. 1808-o

Appeal against the decision to refuse to register the trademark „JÕULUMÖLL“.

The Patent Office refused to register the trademark JÕULUMÖLL with regards to goods and services under class 35.

The Board considers that, for the average consumer, who is reasonably well informed, observant and circumspect, the word “möll” (turmoil), in conjunction with the word “jõulu” (Christmas), relates primarily to sales activities and campaigns for services in the class 35 before or during the Christmas holidays.

The applicant’s assertion that a significant part of the relevant public distinguishes the services covered by the mark at issue as from those of the applicant is vague, and there is no empirical evidence to support that assertion. At the same time, the applicant’s statement contradicts the evidence submitted by the Patent Office in the examination procedure, which shows that the word “JÕULUMÖLL” is used by many different parties. It can be stated that many entrepreneurs, much like the applicant, wish to use the word “JÕULUMÖLL” when referring to their Christmas sales campaigns, but there is no evidence to suggest an intention to take advantage of the applicant’s mark. The use of the word “JÕULUMÖLL” by others in connection with sales campaigns can be considered understandable, given the descriptive nature of the word.

The fact that the Patent Office has previously registered trademarks containing the word “möll” in the name of both the applicant and third parties does not mean that every trademark containing the word “möll” must be registrable.

The appeal was dismissed.


Decision No. 1816-o

Appeal against the decision to partially refuse to register the trademark “OSTUFESTIVAL”.

The Patent Office partially refused to register the trademark OSTUFESTIVAL with regards to goods and services under class 35.

The term “OSTUFESTIVAL” (purchase festival) is formed from two words “ostu” (purchase) and “festival” that are common in Estonian, the meaning of which, in the opinion of the Board, does not remain incomprehensible to the average Estonian consumer.

The fact that the word “OSTUFESTIVAL” does not appear in the dictionaries in the sense of buying or selling campaigns or in any other sense cannot be regarded as significant or decisive, since this fact does not preclude its descriptive character.

It is not apparent from the evidence submitted that the relevant public could associate the mark in question only with the applicant, or that consumers would perceive the element as a trademark of the applicant. At the same time, the applicant’s allegation concerning the acquired distinctive character of its mark contradicts the evidence provided by the Patent Office in the examination proceedings showing that the word “OSTUFESTIVAL” is used by several other individuals. The applicant is one of the many users of the element “OSTUFESTIVAL” and there is no reason to claim that the applicant has a greater right to use this mark than other persons.

The appeal was dismissed.


Decision No. 1847-o

Appeal against the decision to partially refuse to register the trademark„mobile.de + shape“.

The Patent Office partially refused to register the trademark mobile.de + shape with regards to goods and services under classes 9 (in part), 28 (in part), 35 (in part), 36, 38, 41, 42 (in part) and 45.

The Board does not rule out the possibility that the combination of figurative elements of the “mobile.de + shape” mark may be associated with the design of a car number plate for the consumer, but considers that the design of the mark is sufficiently eye-catching and distinctive nonetheless. The Board considers that the Patent Office has unduly underestimated the impact of the design elements of the “mobile.de + shape” mark on the mark as a whole.

The Board does not consider that, in order to divert attention from the descriptive meaning of word elements, the figurative elements of a trademark must necessarily be something extravagant. On the contrary, the Board considers that the relative simplicity and minimalist design of the applicant’s mark, along with the eye-catching design, make it easier for consumers to remember the mark. The Board finds that the applicant’s mark is a combination of design elements which is sufficient to distract the consumer from the descriptive meaning of the word element, awarding the mark a complete, lasting impression.

The Board also considers it significant that the design of the applicant’s trademark alone, i.e. without the word element ‘mobile.de’, is registered as a European Union trademark in Classes 9, 16, 35, 36, 38, 42, 45.

The appeal was sustained.

Court decisions

Harju County Court

Case 2-18-19519

Plaintiff ’s business name

Pihtla Pruulikoda OÜ

Defendant’s trademark

PIHTLA ÕLU

Action brought by Pihtla Pruulikoda (Brewery) OÜ against Taako OÜ for the establishment of a circumstance precluding legal protection against the trademark PIHTLA ÕLU.

The Court finds the plaintiff’s business name consisting of the place name “Pihtla” and the word “pruulikoda” (brewery) essentially descriptive. According to the Court, no evidence has been adduced that the plaintiff has designated and marketed its products under that business name, which could otherwise help establish a link between the products and the business name for the relevant public.

The Court finds that the place name “Pihtla” in the plaintiff’s business name does not confer on the plaintiff the exclusive right to use the element “Pihtla” and the right to prohibit the use of the word in the subsequent registration of a trademark.

The plaintiff also filed an alternative claim to the Court in order to establish circumstances excluding legal protection of the defendant’s trademark.

According to the data submitted to the Court, a total of 139.8 million liters of beer were produced in Estonia in 2015, of which the defendant’s total annual production is only 0.014%. It is not apparent from the documents submitted that the defendant had used the mark “PIHTLA ÕLU” (beer) as a trademark since 1990. No information has been provided to the court as to how the defendant packaged or marketed its products at that time, and whether any elements or trademarks were also used to commercially identify the products. No evidence has been provided to the court that the defendant made investments or advertising to increase its reputation.

The Court considers that, in order for the mark “PIHTLA ÕLU” to be well known, it is necessary for the mark to have acquired distinctive character among the average beer consumer and not only among the narrow sector engaged in the production and sale of craft beer.

The Court considers that it is not disputed that the defendant produced and marketed the beer; the materials provided by the defendant also suggest that the mark “PIHTLA ÕLU” has been used, but that the use is so small that it is not sufficient to establish that the defendant’s sign is distinctive through use and is a well-known trademark.

The appeal was sustained.


Supreme Court

Case 2-19-19495

The applicant requested an entry in the commercial register for its private limited company ERIAL EHITUS (construction) OÜ with the proposed main activity being construction of residential and non-residential buildings. The courts have held that, since the word “ehitus” (construction) is protected as a trademark in class 37 (construction of residential and non-residential buildings), the applicant cannot use the word “ehitus” in his business name without the consent of the trademark proprietor. The Supreme Court does not agree with the position of the courts.

The trademark “Ehitus” referred to by the courts, which is alleged to be an obstacle to the registration of the applicant’s business name, is a figurative mark containing the word element “ehitus” and protected under class 37, namely in the field of various construction services. In such a case, it is not the word “ehitus” – clearly an element descriptive of a service – that is considered as a distinctive and protected element. Thus, in the case of the mark at hand, it is not the word “ehitus” alone which is protected, but rather the figurative mark containing a word element as a whole.

The fact that the Patent Office did not state in the registration that “registration of a trademark does not grant an exclusive right to use the word “ehitus” does not make the word element a distinctive mark in the field of construction services protected by trademark law. It would be unreasonable to interpret that a person who succeeds in registering a composite mark containing the word “ehitus” in the field of construction services would have the exclusive right to use that word in the field of construction and thus prohibit other persons from using that word in his business name.

The matter was sent to the registry department of the county court for new review.

The appeal was partially sustained.

Decisions of the Domain Disputes Committee

Case No. 20-1a-334

Opposed domain name: keeleamet.ee

The Board decided to transfer the domain name keeleamet.ee to the Republic of Estonia (through the Keeleinspektsioon (Language Inspectorate)).

As an earlier right, the appellant relies on the name of a government agency that used to be called the Keeleamet, now it is called the Keeleinspektsioon and since 01.08.2020 it is again the Keeleamet.

One of the reasons why the Keeleinspektsioon will not become the Keeleamet until 01.08.2020 is the need to prepare for the name change, including the introduction of a suitable domain name. The Board therefore considers it correct to view the names of public authorities in respect of which the law providing for the amendment has been adopted, promulgated and published as an earlier right. Although the words “amet” (board) and “inspektsioon” (inspectorate) are different words when comparing the letters used, their content is very similar and therefore confusing.

The Registrant has not identified any circumstances that could give the registrant a right or a legitimate interest in relation to the domain name.

The purpose of the registration of the domain name by the registrant was, in the opinion of the Board, to prevent the opponent from doing so, making the last chance to obtain the domain name dependent on the registrant. In addition, the Board drew attention to the allegations made by the registrant in its reply that trading in domain names was a lawful activity and that the registrant was awaiting the opponent’s request to find “compromises” and “solutions” “through trade”, which is the basis for considering the registration as done in bad faith.

The opposition was sustained.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

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Estonia

turvaja@turvaja.ee
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© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1748-o

Opposition to the registration of the trademark “Mehed ei nuta” (“Men Don’t Cry”).

The Board considers that the evidence provided by the applicants in the present proceedings concerning the formation and previous use of the name of the sports program proves that the copyright in the title of the work belongs to the authors of the program and not to the radio service provider. Accordingly, the opponent is not entitled to prohibit the use of the title of the program in the trademark and, consequently, the title of the program cannot be relied on as a factor precluding legal protection of the trademark. The Board explains that, although the contested mark is protected, inter alia, in respect of radio broadcasts, this does not prevent the appellant from exercising its copyright as a radio service provider in the reproduction and distribution of previously broadcast programs.

The Board considers that the advertising of the program by the appellant does not prove anything from the point of view of copyright, but is rather an economic activity of a radio station intended to attract listeners to a broadcast by a radio station. There is no dispute between the parties as to the remuneration paid to the authors; however, this remuneration cannot be considered as an attestation of employment or remuneration for the transfer of copyright.

The opposition was dismissed.


Decision No. 1787-o

Earlier trademark

MONACHOL

Opposed trademark

Opposition to the registration of the trademark “MONACOR forte + shape”.

Although the design of the applicant’s mark contributes to its distinctive character, it is insufficient since the distinctive word elements of the applicant’s and the opponent’s marks are very similar, making the marks as a whole very similar. The Board agrees with the applicant that the word element “FORTE” is a common word used descriptively in the field of medicinal products and health products. Such an element does not constitute a single dominant feature with the distinctive part “MONACOR” and does not, in the Board’s view, enhance the distinctive character of the contested mark.

Although, according to the applicant, the sign at issue refers to an abbreviation of the word “monacolin” – an extract of Chinese red yeast rice –, the Board does not consider it plausible that most consumers are able to establish such a link.

Since food supplements and vitamins are sold as over-the-counter consumer goods, the applicant’s claims concerning the increased attention of the consumer and henceforth the reduced likelihood of confusion do not appear to be valid. The role of an incomplete memory image is more important in terms of over-the-counter products and, since the dominant word elements of the marks are identical, it increases the likelihood of confusion between the marks.

The opposition was sustained.


Decision No. 1799-o

Earlier trademark

Põhjala catering

Opposed trademark

Opposition to the registration of the trademark “PÕHJALA + shape“.

Although catering services and accommodation services belong to the same class of the Nice Classification, they have different purposes and nature; they are not complementary or substitutable and cannot be regarded as identical. However, since a certain link between those services is possible, their similarity cannot be denied. Nevertheless, the Board considers that the degree of such similarity is rather low. In the present case, given the low degree of similarity between the marks, the lack of identicality of the services covered by the marks and the low degree of similarity between those services, it is unlikely that the consumer will confuse the two marks.

The article of Eesti Ekspress attached as evidence is a marketing article prepared in cooperation between the opponent and the persons mainly related to them, from which the reputation of the opponent’s trademark cannot be inferred in the Board’s opinion. It is apparent from the additional articles that the opponent has been declared the best wedding caterer twice, but that fact alone does not allow conclusions to be drawn as to the reputation of the catering service in other contexts. The Board cannot conclude from the evidence that the earlier mark has developed a sufficient reputation in relation to catering services.

The opposition was dismissed.


Decision No. 1809-o

Earlier trademark

APOVIT

Opposed trademark

Contestation of the legal protection of the trademark “Apovital + shape”.

The Patent Office forwarded a notice to the owner of the opposed trademark regarding the filing of the opposition. The owner has not reacted to the call to assign his representative, and the Board has therefore applied the accelerated procedure. Thus, the Board grants the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.

II Appeals

Decision No. 1790-o

Appeal against the decision to refuse to register the trademark „1Apteek + shape“.

The Patent Office refused to register the trademark 1Apteek + shape with regards to goods and services under classes 5, 35 and 44.

The Board emphasizes that a consumer may not necessarily be familiar with the business name of a trademark proprietor in a market situation, and in such a case the tradename does not contribute to the interpretation of the trademark. In addition, a trademark is a transferable asset. The Board therefore considers that a trademark must, by its very nature, be capable of fulfilling the essential function of distinguishing the goods or services of one entity from those of the same kind of another.

Further, the Board recognizes that the contested mark does not merely convey an insignificant change in the word “pharmacy” or constitute a basic combination of the elements “1” and “pharmacy”, but is rather an unusual and distinctive combination of design and stylistic elements that make the mark capable of distinguishing the relevant goods and services.

The Board observes that the reference to other trade mark registrations is normally not decisive, since each mark must be assessed individually in accordance with the relevant legislation. However, in the present case, the similar concept of trade mark registrations put forward by the applicant further supports the applicant’s views. The Board considers that the applicant may even have a legitimate expectation that their trademark with a comparable concept will be registered in a manner similar to the current practice of the Patent Office.

The appeal was upheld.

Court decisions

Tallinn Circuit Court

Case No. 2-19-5745

The plaintiff’s trademark

Signs used by the defendant

kodastay.com

KODA stay

Action brought by KODA Ehitus OÜ against KODAstay OÜ for termination of the use of a sign similar to the registered trademark in the course of business activity and prohibition of its use in the company’s business name.

According to the circuit court, the county court has correctly established that the plaintiff’s trademark and the defendant’s sign are not similar and that it is unlikely that consumers will confuse them. In addition, the services provided by the parties to the proceedings are not identical or of the same type. Nor did the defendant’s business name and domain name infringe the plaintiff’s rights as a trade mark proprietor.

The applicant cannot monopolize indistinguishable words used in usual language (e.g. “koda”/“chamber/shell”). Such a word is not capable of distinguishing the goods/services of one entity from the similar goods/services of other entities. The plaintiff’s mark and the defendant’s signs both have to be considered as a whole.

The circuit court agrees with the county court in that accommodation services and real estate rental cannot be considered to be services of the same type. The main difference is the fact that accommodation services include more services than renting real estate. Goods and services are not considered to be different solely on the ground that they belong to different classes of the Nice Classification.

The appeal was dismissed.

Decisions of the Domain Disputes Committee

Case No. 20-1a-331

Opposed domain name: e-homer.ee

The Board decided to transfer the domain name e-homer.ee to the opponent.

According to the opposition, the domain name is identical or misleadingly similar to the earlier domain name “ehomer.ee” belonging to appellant 1 and the earlier business name “eHomer OÜ” belonging to appellant 2, and misleadingly similar to the figurative trademark “Homer. Ehitame koos!” (“Homer. Let’s build together!”) belonging to appellant 2.

Given the fact that in modern commercial practice the element “e” or “e-” is often added to the names of companies or brands operating under well-known marks in the context of e-commerce, the Board considers that the domain name “e-homer.ee” is misleadingly similar under the trademark “Homer. Let’s build together!”. The Board contends that the registrar’s reply that it was entitled to register the domain name at issue, in so far as there are other similar domain names previously registered, cannot be regarded as relevant or correct.

The evidence shows that the registrar has repeatedly offered the domain name to the opponent for sale at a price significantly higher than the cost of registering the domain name. According to the opponents, the registrar has used the disputed domain name to direct customers to its website and the registrar has not disputed this factual allegation. In the light of the circumstances, the Board concluded that the registrar had registered the contested domain name with the intention of taking advantage of the reputation of applicant 2 or of their earlier rights.

The opposition was sustained.


Case No. 20-1a-329

Opposed domain name: pkvarvikeskus.ee

The Commission considers that the element “värvikeskus” (“colour centre”) is devoid of any distinctive character because it is a descriptive word for a field of activity, such as a car centre or a health centre, which refers exclusively to the content of the service.

The registrar has explained that the abbreviation “pk” at the beginning of the domain name unambiguously refers to “Puukeskus” (“Wood centre”) and the symbol “pk” semantically, visually and phonetically distinguishes the domain name from the opponent’s domain name “varvikeskus.ee”. In addition, the Board found that the contested domain name was identical to the trademark “PK värvikeskus” belonging to the registrar. The fact that a company has subsequently registered a trademark similar to the domain name and uses a domain name identical to its own trademark does not automatically indicate the bad faith of the registrar.

The opposition was dismissed.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

Patendibüroo TURVAJA OÜ
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© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

Decisions of the Estonian Industrial Property Board of Appeal

Decision No. 1856

Transfer of the trademark “FUTÜKA kids we create furniture”.

This application was based on a request to declare the trademark registered by the distributor of the Applicant invalid and to transfer it to the Applicant. Section 52(3) of the new Trade Mark Act provides that if a trade mark is registered in the name of the agent or representative of the proprietor of the trade mark without the proprietor’s consent, the proprietor of the trade mark has the right to file, within five years after becoming aware of the registration of the trade mark in the name of the agent or representative, a request with the Board of Appeal to claim the transfer of the trade mark to the proprietor – unlike the pre-existing right under the previously applicable legislation to bring a court action.

The Applicant became aware of the trademark registered in the name of the distributor from their letter asking the Applicant to stop using the FUTUKAKIDS trademark in Estonia. Under the contract between the two parties, the distributor had acquired the right to resell the Applicant’s goods, not the right to register their trademarks in their own name.

In response, the distributor informed the Board of Appeal of their willingness to surrender the trade mark in relation to all goods and services, requesting that the trade mark be removed from the register and that the proceedings be terminated.

The Board of Appeal considered that the rights under the Paris Convention and the Trademark Law would be meaningless if a person acting as a representative of the trademark proprietor, against whom the trademark proprietor has filed for a transfer, could permanently convert the subject of the claim into a legally non-existing trademark. Therefore, the request of the distributor for the removal of the mark from the register was not considered to be lawful. In addition, the Board of Appeal stated that the application for revocation had been filed by the distributor with the Board of Appeal, and not with the Patent Office as the registrar of the trade mark.

As it appeared from the content of the response of the distributor that they did not wish to contest the Applicant’s statement, the Board of Appeal decided to grant the transfer claim.

The transfer request was granted.

Court Decisions

Case No. 2-16-6665

The applicant brought an action against the defendant in Harju County Court, asking the Court to prohibit the defendant from using the domain name veskimoldre.ee, to establish the defendant’s obligation to file a declaration of intention to transfer the domain name to the applicant through the registrar and to oblige the defendant to refrain from registering a domain name containing the element “VESKIMÖLDRE”. The defendant filed a counterclaim for the invalidity of the applicant’s exclusive right against the mark “VESKIMÖLDRE”.

The Harju County Court upheld the action and dismissed the counterclaim.

The defendant appealed against the county court’s decision, seeking annulment of the county court’s judgment and a new judgment granting the counterclaim and dismissing the action.

The Tallinn Circuit Court quashed the county court’s judgment in so far as the County Court upheld the action. In the annulled part, the circuit court issued a new judgment dismissing the action. Otherwise, the circuit court upheld the county court’s decision. The defendant’s appeal was upheld in part.

The applicant appealed seeking annulment of the judgment of the circuit court in so far as it partially annulled the judgment of the county court and dismissed the action, and requesting for a new judgment upholding the action in so far as it was not reconsidered. The defendant filed a counterclaim, seeking annulment of the circuit court’s judgment dismissing the defendant’s counterclaim, and a new judgment granting the counterclaim in its entirety. Otherwise, the defendant sought leave to uphold the circuit court’s decision. The Supreme Court quashed the judgment of the Tallinn Circuit Court and referred the matter to the same circuit court for reconsideration. The appeal in cassation and the counterclaim were partly upheld.

Tallinn Circuit Court quashed the county court’s judgment, dismissed the action and sustained the counterclaim. The circuit court declared the applicant’s exclusive right to the registered mark VESKIMÖLDRE invalid. The appeal was upheld.

The applicant filed an appeal in cassation with the Supreme Court, asking that the circuit court’s judgment be set aside in its entirety and that a fresh decision be made in the matter without reopening the application in favour of the applicant, dismissing the defendant’s counterclaim, and ordering the defendant to pay the costs. In the appellant’s view, the district court also misapplied substantive law. The defendant contested the appeal in cassation and contended that it should be dismissed.

The Supreme Court found that the circuit court, in declaring the applicant’s exclusive right null and void, violated the duty to state reasons for the judgment, and could also have violated the obligation to consider only the evidence relevant to the case. The Supreme Court agreed with the applicant that some of the evidence relied on by the circuit court was irrelevant. In its assessment of the claim for revocation of the proprietor’s exclusive right, the circuit court also infringed procedural law by taking into account evidence that occurred after the application for registration of the VESKIMÖLDRE trademark was filed, without substantiating how that evidence could provide for conclusions on the circumstances present during the time of the filing of the application. In addition, the circuit court did not justify taking into account evidence that did not indicate when the information was published or whether it was available at the time of filing the application for registration of the mark. The circuit court had failed to substantiate the basis for invalidating the applicant’s exclusive right in respect of all the services covered by the trade mark registration, in breach of its obligation to state reasons. By the contested decision, the District Court dismissed the action for the transfer of the domain name, inter alia, because the counterclaim was upheld and the applicant’s exclusive right against the VESKIMÖLDRE trade mark was invalidated. Consequently, the dismissal of the action may have been dependent on the granting of the counterclaim. Since the contested decision is annulled in so far as it allowed the counterclaim, it must also be annulled in so far as it dismissed the application.

The judgment of the Circuit Court was dismissed on the ground of misapplication of the substantive law and on the ground of a serious breach of the procedural law, and remanded to the same court for reconsideration. The appeal in cassation was sustained in part.


Case No. 2-19-4734

The applicant filed a claim with the Harju County Court against the defendant, requesting that the defendant’s exclusive right to the registration of the word mark “METALOCK” in Estonia be terminated due to non-use. The defendant admitted the action immediately.

The action was sustained on the basis of admission of the action.

This decision is related to the judgment of the Tallinn Circuit Court in civil case no. 2-18-6757, as the revoked word mark was one of the grounds by which the proprietor of the revoked mark opposed registration of the “FinMetalock” mark. The invalidation of word mark No 0721941 “METALOCK” affected the parallel dispute between the parties in civil case no. 2-18-6757, to the detriment of the proprietor of the revoked trade mark.


Case No. 2-19-4734

Applicant’s trademark

Defendant’s trademark

The applicant brought an action against the defendant before the Harju County Court seeking a declaration that there is no bar to legal protection in relation to the applicant’s trademark “FinMetalock”.

The applicant claimed that the parties’ marks are neither identical nor similar, since there are significant visual, phonetic and conceptual differences; the overlapping element of the marks is essentially devoid of any distinctive character because it describes a particular process and is known to relevant consumers as a descriptive name; the parties offer goods and services bearing their trademarks exclusively to such a public; the goods and services protected by the trademarks of the parties are not identical or similar; in summary, there is no likelihood of confusion either directly or indirectly.

The county court dismissed the action. The applicant appealed against the judgment of the county court seeking annulment of the county court’s judgment and a new judgment granting the action.

Tallinn Circuit Court upheld the appeal and found that there was no bar to legal protection in relation to the applicant’s trademark “FinMetalock”.

As the defendant’s trade mark registration No 0721941 “METALOCK” was retroactively invalidated in the interim proceedings, this word mark lapsed as a ground for refusing registration of the mark “FinMetalock”.

Further, the circuit court criticized the county court for failing to take into account the binding nature of the earlier judgment. An earlier judgment (civil case 2-14-59045) had already established the substance of the legal relationship between the parties and found that the defendant’s trademark and the applicant’s mark were not similar and that there was no likelihood of confusion between them.

The appeal was sustained.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

Patendibüroo TURVAJA OÜ
Liivalaia 22
Tallinn 10118
Estonia

turvaja@turvaja.ee
Phone: +372 6 403 109
Fax: +372 6 403 105

© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1755-o

Earlier trademarks

MORE &

MORE & MORE ACADEMIA

MORE & CO.

MORE & MORE

Opposed trademark

The trademarks are confusingly similar.

According to the Board, the applicant’s mark is visually, phonetically and semantically similar to the earlier trademarks in so far as it is likely to cause confusion.

In the present case, the stylization of the applicant’s mark is very minimal and the beginning of its verbal element is identical to that of the earlier marks. The likelihood of confusion is further increased by the fact that the marks in question are registered for identical or very similar goods and services.

The applicant’s claim that “More´” is a French word pronounced [moree] is false. In French, accents are used on the vowel, not after the letter. Today, ”nd”, “and” and “&” have been replaced by the shorter symbol “´”. It is therefore possible to pronounce the contested mark in the same way as the earlier trademarks.

The opposition was sustained.


Decision No. 1768-o

Earlier trademarks

PANDA

Opposed trademarks

JOYCO (ruumiline)

JOYCO + kuju

The trademarks are visually, phonetically, semantically and conceptually different.

The opponent’s earlier Panda series word and figurative marks represent planar reproductions or graphic images which are not visually, phonetically, semantically and conceptually similar or identical to the applicant’s later three-dimensional mark. When seeing a two-dimensional word and a figurative mark, the consumer does not perceive an identical or similar image as compared to the three-dimensional image created by seeing a three-dimensional mark. Contrary to the opponent’s contention, the Board considers that the lettering on the black edge of the panda bear’s three-dimensional mark is sufficiently visible, legible and phonetically pronounced on the reproduction.

The similarity from a conceptual point of view, i.e. a reference to a panda bear, cannot be considered significant as it is a commonly used motif for the goods concerned. The dominant part of the three-dimensional mark, JOYCO, is not wholly included in the earlier Panda series marks of the opponent.

The opposition was dismissed.


Decision No. 1777-o

Earlier trademark

Vacqueyras

Opposed trademark

VAQERA

The trademarks are not confusingly similar.

The Board considers that, in the present case, the marks at issue are not identical or similar, and therefore the VAQERA mark is not an imitation of the designation of origin “Vacqueyras” (French wine region). The contested mark is sufficiently distinguishable from the protected designation of origin. Namely, the elements are of different length, visually distinct and their pronunciation is sufficiently contrasting for the Estonian consumer.

The Board also considers it necessary to note that, in the context of these proceedings, purely vague assumptions made by the opponent could not be used to assess potential future behavior of the applicant and warrant refusal to register the applicant’s trade mark solely based on doubts regarding the applicant’s use of the mark with the relevant product specification.

The opposition was dismissed.


Decision No. 1576-o

Opponent’s element

Opposed trademark

The opponent’s element has not become well-known for the public.

Both the opponent’s element and the opposed trademark depict cows. The applicant calls such a design “cows grazing freely in the meadow,” the opponent considers the element to be a concept, and describes it as “free-roaming cows.”

The Board agrees with the applicant’s claims that the concept cannot be registered as a trademark. Similarly, the Trademark Act does not allow a concept to be recognised as well-known within the meaning of the Act. In addition, the Board considers that three advertising pages and two ads on YouTube are not sufficient for the element at issue to be considered as well-known. The depiction of cows on the merchandise of the various dairy and cheese industries and the advertising of these merchandise has become commonplace.

In order to enforce copyright under the Trademark Act, an appellant must prove his or her authorship of a particular copyright object. This has not been proven by the opponent. In the Board’s view, it is unclear exactly what the opponent considered to be his work.

The opposition was dismissed.


Decision No. 1759-o

Earlier trademark

ASPIRIN

Opposed trademark

The trademarks are not confusingly similar.

The Board considers that the marks at issue are visually different. The earlier mark is made up of seven letters and the applicant’s mark consists of five letters, the middle letters being completely different. The difference in the two letters is also noticeable to the average consumer, as it alters the length of words visually significantly. The Board further considers that the shape contained in the applicant’s mark is a distinctive and conspicuous element.

The Board observes that the marks are also pronounced differently in their entirety, because of the different number of syllables, the length of the words and the emphasis on pronunciation.

The earlier trademark relates to consumers as an analgesic and an antipyretic drug. Meanwhile, the applicant’s trademark may be associated with a U.S. winter sports resort or an English equivalent for the word “haab” (“aspen” in Estonian”). The Board therefore considers that there is also a clear semantic difference between the marks at issue.

In addition, the Board considers it important to point out that there are many different names of medicaments beginning with ASP, belonging to different persons in both the Register of Medicinal Products and the databases of Estonian and European Union trademarks. It follows that, more generally, the initials ASP in the market for pharmaceuticals and other Class 5 goods are not such as to be attributable solely to the opponent.

The opposition was dismissed.


Decision No. 1749-o

Reproduction of the mark applied for by the opponent

Reproduction of the opposed trademark

The applicants, as those who filed first for the trademark, shall be entitled to the relating rights.

The opponent has essentially asked to be identified as the applicant/owner of the contested mark. This is not possible under applicable law. An application made by other persons cannot be transferred to a third individual.

There is no dispute that the Vanemõde ensemble was formed in late 1985. However, it has not been proven that the name of the ensemble was provided by the opponent and that they would have the exclusive right to use that name because of its reputation or otherwise.

The applicants have filed a trade mark for registration. This logo is a copyright work. The applicant has not transferred their authorship to the opponent.

The evidence and other circumstances presented in the proceedings do not give rise to any greater right of the opponent to the contested trade mark; the earlier trade mark applicants have the right to the disputed trademark.

The opposition was dismissed.

II Appeals

Decision No. 1779-o

Appeal against the Patent Office’s decision of 05.07.2018, by which the Patent Office partially refused to register the trademark “E-KÜTUS”.

The Board agrees that, for the Estonian consumer, the term E-FUEL in the context of these services is immediately, without further thought, understood as electronic fuel sales, that is, fuel sales through e-commerce. This is despite the fact that fuel cannot be purchased electronically and delivered online to the consumer. The fact that the trademark application was refused in relation to services and not for goods is not decisive, since the similarity of the goods and services is not assessed by class. Thus, the applicant’s argument, which emphasizes the physical nature of the fuel and a certain lack of understanding in relation to the concept of electronic fuel, is not convincing and conclusive.

The Board adds that the lack of trademark protection does not mean that the applicant cannot use the element in question in the course of trade in fuel on the internet or provide other services for which registration of the mark is sought. At the same time, the applicant’s monopoly rights are limited to those services for which the Patent Office has not established any circumstances precluding legal protection.

The appeal was dismissed.


Decision No. 1769-o

Appeal against the decision of the Patent Office of 25.05.2018 refusing to register the trademark “PIHTLA ÕLU”.

The Board considers that the Patent Office did not act in accordance with the principles of trademark law or good administration in the proceedings.

It is incomprehensible why the Patent Office had first registered a trademark contained in a subsequent trademark application before the final decision on the trademark contained in the earlier application had come into force, and suspended the earlier trademark application procedure “pending the entry into force of the final earlier trade mark right”. In order to take account of these legitimate advantages, the Patent Office must follow in its proceedings the order in which applications are filed, always adhering to the advantage of the first to file principle. In the current case, the Patent Office has violated this obligation.

In addition, the Patent Office has been opaque and unpredictable in its proceedings.

The Board adds that an unregistered trade mark which has acquired distinctive character is not protected by the law on trademarks and that neither the mark nor the application made thereunder gives rise to any advantage over an earlier application of another party, even if it is filed after the acquisition of distinctive character. The Patent Office must formulate its position in accordance with the legislation in force and the evidence available to it, and the applicant must be afforded adequate opportunity to examine the materials used in the processing of their application and to present their views.

Descriptive and non-distinctive elements are not registered as trademarks, precisely because such elements must remain freely available to anyone who offers a product or service of the same description. The individual who claims that a third party has acted in bad faith must prove it. The Board, in its assessment of the materials submitted by the Patent Office, finds that the material does not allow the applicant to be proved in bad faith.

The appeal was sustained.

Court Decisions

Circuit Court of Tallinn, civil case No. 2-17-9843

The applicant brought an action against the defendant seeking a declaration that the “MacCoffee 3 in 1 + shape” was ineligible to be protected as a trademark. The applicant founded in McDonald’s, the world’s leading fast food company, in 1940. The applicant claims that the defendant’s trade mark registration is incorrect and infringes its earlier trade mark rights.

The Harju County Court dismissed the action and ordered the applicant to pay the costs of the proceedings. The County Court held that, because of the differences, the defendant’s trade mark could not undermine the distinctive character and reputation of the applicant’s trademarks or cause them to be unfairly exploited, as claimed by the applicant in its application.

In its appeal, the appellant seeks the annulment of the judgment of the County Court, a new judgment sustaining the appeal, and for the defendant to pay the costs. According to the applicant, the County Court did not assess the similarity of the marks in relation to all the facts on which the applicant relied in its application.

The District Court considered that the County Court had carried out a visual, phonetic and conceptual comparison of the marks and assessed their similarity in relation to all the facts put forward by the applicant. The County Court has assessed the similarity of the marks on the basis of the average consumer. The Chamber agrees with the County Court’s finding that the marks are sufficiently different in overall impression to distinguish the goods of one manufacturer from those of another, and that there is therefore no likelihood of confusion.

The County Court rightly proceeded on the basis that the assessment of the similarity of the marks and the likelihood of confusion arising therefrom must be based on the overall visual impression produced, with particular regard to their distinctive and dominant components. There is no visual similarity between the “McCAFE” and “MacCoffee 3 in 1” marks. In the District Court’s opinion, the defendant’s trade mark does not exploit or damage the reputation or the distinctive character of the applicant’s other “Mc” assets. The applicant’s “Mc” prefix marks, apart from the McDonald’s mark, which is known as a fast-food chain mark, are not known to a significant part of the Estonian public. Nor does the prefix “Mac” constitute a distinctive feature of the applicant’s trademarks.

The appeal was dismissed.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
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© Patendibüroo TURVAJA OÜ, 2022

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 1618-o

Earlier trademarks

Opposed trademark

The Board agreed with the applicant that the phrase VENE JUUST (“Russian cheese” in English) is a descriptive sign showing the kind of the cheese, that cannot be monopolized and registered in the name of one person. Phonetically, semantically and conceptually speaking, the Board found that it is unlikely that the compared signs are confused, including associating the applicant’s sign with earlier signs.

The opposition was dismissed.


Decision No. 1616-o

Earlier trademarks

Opposed trademark

The Board found that visually and conceptually, the overall impression of the compared trademarks is confusingly similar because they both consist of images of clouds/spots that are depicted the same way. Despite the fact that the opposed sign also includes the verbal element “estover”, it remains more on the background of the red clouds and thus it cannot be seen as the dominant element in the respective sign. The Board agreed with the opponent that when evaluating phonetic difference, account must be taken of the specifics of certain goods, namely that in this case the consumers will mostly choose them from store shelves and will not make their buying decision based on hearing.

The opposition was sustained.


Decision No. 1752-o

Earlier trademark

ALECOQ

Opposed trademark

LE COCO

In the view of the Board, it is likely that he opponent’s trademarks are known to the majority of the consumers, which do not require additional proof from the opponent, and which makes the opponent’s trademarks highly distinctive signs. The Board found that the registration of the sign LE COCO in the applicant’s name for both dissimilar as well as similar and identical goods-services, might damage the distinctiveness and reputation of the earlier reputable sign.

The opposition was sustained.


Decision No. 1717-o

Earlier trademark

BEAUTY BAY

Opposed trademark

BEAUTY BAY JUUKSESTUUDIO

One of the main arguments of the applicant was that the goods-services protected by the opponent’s trademark in classes 3 and 35, and services marked by the applied trademark in class 44, are different. The Board noted that the goods and services in all three classes are used by people on a daily basis for personal hygiene and for taking care of one’ s appearance (esthetics). The comparable goods-services support and complement each other, their target group overlaps, and they belong to the same field of business. Therefore, the compared goods and services are similar and of a similar kind. The Board found that the word JUUKSESTUUDIO (“Hair studio” in English) in the applicant’s trademark is a descriptive element showing the kind of services, which is why the dominant part in both trademarks is the phrase BEAUTY BAY, that is visually, conceptually and phonetically identical.

The opposition was sustained.


Decision No. 1054-o

Earlier trademarks

INTERACT

Opposed trademark

InterAct

The Board found that due to the coinciding word INTERACT, the opposed trademark is confusingly similar to the opponent’s earlier trademarks, despite the fact that in addition to the word INTERACT, the opponent’s combined trademarks also include a circular design element, the word CLUB and the sign I. The Board agreed with the opponent that due to the pronunciation of the word INTERACT, the comparable trademarks are phonetically similar. The Board also noted that the trademarks are conceptually similar because the dominant parts INTERACT in both signs are overlapping.

The opposition was sustained.


Decision No. 1753-o

Opposed trademark

The opponent claimed that the applicant has filed the application in question in bad faith, since the member of the board of the applicant used to work for the opponent, creating and leading the Moekino project (“Fashion cinema” in English).

The Board ascertained that the contract signed between the opponent and the member of the board of the applicant included an item, pursuant to which the parties agreed that if, under the agreement, a work (works) to which copyright arises is created, the rights of the respective works, in particular those that are transferable, including but not limited to proprietary rights, shall be vested in the opponent. In the view of the Board, it has been proven that the applicant knew that for a long time, the opponent has organized the MOEKINO program within the framework of its film festival. The applicant had contractual relations with the opponent and objective circumstances show that the applicant’s intent when filing the application and using the sign in question, was to take the opponent’s place and organize the MOEKINO program without the opponent’s consent.

The opposition was sustained.


Decision No. 1747-o

Earlier trademark

THREE BARRELS

Opposed trademark

Seven Barrels

The Board found that the word “BARRELS” in the compared trademarks does not have a highly distinctive character when it comes to (strong) alcoholic beverages in class 33 – the word is descriptive and customary in relation to those goods. In this case, the words “THREE” and “SEVEN” preceding the word “BARRELS” in the compared trademarks, are clearly different. Since the consumer does not associate the word “BARRELS” with one specific entrepreneur, then based on the preceding words Seven vs THREE, that are visually, phonetically and semantically different, the trademarks as a whole should be considered sufficiently different.

The opposition was dismissed.

II Appeals

Decision No. 1738-o

The applicant disputed the Patent Office’s decision to refuse to register the trademark NUTIKASSA (“smart cashier” in English) for some applied services in classes 35 and 36. The Patent Office found that the trademark NUTIKASSA lacks distinctiveness for these services and that the sign is descriptive.

The Board didn’t agree with the applicant that there is no such word in the Estonian language as NUTIKASSA. NUTIKASSA is a compound word that consists of two parts NUTI and KASSA, and there a different widely used words with the prefix NUTI (“smart” in English) in the Estonian language, for example: smart phone, smart device, smart rent, smart store, smart home, smart house etc. The Board found that throughout the proceedings, the applicant has failed to prove that the consumers associate the sign NUTIKASSA first and foremost/solely with the applicant and noted that other self-service cashiers are also called smart cashiers in spoken language.

The appeal was dismissed.


Decision No. 1754-o

The applicant disputed the Patent Office’s decision in part with which they refused to register his trademark

in class 43 for “temporary accommodation” due to an earlier company name OÜ Lydia Hotell.  The applicant admitted that the company name OÜ Lydia Hotell is earlier than his trademark application but found that since the company has not applied for the name of the hotel “Lydia” to be protected as a trademark, then the company has taken the risk that the applicant will legally acquire that sign as a trademark.

The Board fully agreed with the Patent Office, noting that the Trademark Act does not only include trademarks as earlier rights, but company names as well. The fact that the owner of an earlier company name has not applied to register the trademark “LYDIA”, is irrelevant, because the company already owns earlier rights based on their company name.

The appeal was dismissed.

Court Decisions

Circuit Court of Tallinn, civil case No. 2-16-4917

The defendant opposed the Patent Office’s decision to register the claimant’s trademark „solar4you free energy“, claiming that it is similar to his earlier registered trademark „Solar4You“. The Industrial Property Board of Appeal sustained the defendant’s opposition on the reason that the trademarks are similar and goods-services marked by these trademarks are similar and identical. The claimant filed a claim with the County Court, asking to declare the defendant’s exclusive rights to the trademark  „Solar4You“ extinguished or alternatively, to declare that there are no circumstances precluding legal protection for the trademark „solar4you + kuju“.

Harju County Court sustained the claim and declared the defendant’s exclusive right to the trademark „Solar4You“ extinguished. The Court found that the defendant has failed to present evidence that would prove the actual existence, production and selling or activities directed at selling, of goods marked by the trademark, during five the 5 years preceding the claim.

In his appeal, the defendant sought the annulment of the County Court’s decision and dismissal of the claim by a new decision. According to the defendant, he has demonstrated the actual use of the mark and the County Court has wrongly disregarded the view expressed by the Court of Justice in Case C-416/04 on genuine use of the trademark where use of the trademark is restricted in part of marketed goods or customers.

The Circuit Court dismissed the appeal but partially amended the grounds of the decision. The appellant had repeatedly made allegations of alleged bad faith in the claimant’s conduct, considering that the claimant wishes to start using a sign similar to the earlier registered trademark of another person and, in the event of a dispute, tries to find ways to get rid of the obstacle. The Chamber acknowledged that the County Court had not responded to that objection in the contested decision. The Chamber noted that, in the absence of actual use of the earlier registered trademark by the defendant in the present civil case, the claimant’s behavior in filing its application for registration as well as in the use of a trade and domain name similar to the trademark could not be contrary to the principle of good faith.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:

Patendibüroo TURVAJA OÜ
Liivalaia 22
Tallinn 10118
Estonia

turvaja@turvaja.ee
Phone: +372 6 403 109
Fax: +372 6 403 105

© Patendibüroo TURVAJA OÜ, 2022