Newsletter No. 37

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

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

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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