Newsletter No. 32

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.

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