Newsletter No. 33

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

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

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.

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