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Newsletter No. 35
March 2021
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.
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We invite you to have a look at the 46th issue of Turvaja newsletter.
We invite you to have a look at the 45th issue of Turvaja newsletter.