Newsletter No. 31

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.

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