Newsletter No. 40

Decisions of the Estonian Industrial Property Board of Appeal

I Oppositions

Decision No. 2004-o

Earlier trademark

Opposed trademark

PENOPLEX

Opposition to the granting of legal protection to trademark PENOPLEX(accelerated procedure).

The opponent considers that the applicant’s mark “PENOPLEX “ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “PENOFLEX”. In addition, the applicant’s goods in Class 17 are similar or identical to those covered by the opponent’s 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.


Decision No. 1920-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark „ slice in 3 Maksa 3 osas lisatasuta + device .

Both trademarks are protected for services in Class 36 and the services covered are in part identical and of the same kind.

The Board considers that the word “SLICE” is the visually dominant element of the trademarks, with or without the addition of the number 3. According to the Board, the word “in” in the contested mark is so stylized that it acts as a figurative element. As trademarks are remembered and referred to in both trademark and commercial practice through the word element, it is likely that the word SLICE is also the most memorable and distinctive element phonetically, regardless of how the consumer pronounces it. Thus, the most striking, memorable and dominant element of the comparable trademarks is essentially identical and the overall impression given by the comparable trademarks as a whole is similar.

The opposition was sustained.


Decision No. 2027-o

Earlier trademark

FOOD ON FOOT

Opposed trademark

Opposition to registration of the trademark „ On Food + device.

The mere fact that the comparable trademarks contain identical elements (the words „food“, „on“) is not, in the Board’s view, sufficient to consider the trademarks to be similar to an extent which could lead to confusion. The difference is compounded by the fact that the opponent’s trademark contains, as a third word, the element „foot“, which cannot be found in the applicant’s. The visual style of the applicant’s mark, and the use of dark blue and orange also increase the visual difference between the trademarks.

The Board considers that the difference between the comparable trademarks is particularly clear from a semantic point of view. The opponent’s trade mark „FOOD ON FOOT“ relates to the concept of providing food to the consumer in a way that the food is intended to be consumed upright, quickly and/or in passing (such as the „street food concept“). The applicant’s trade mark does not give rise to similar associations.

The Board also emphasizes that the word „food“ in trade marks for foodstuffs is not in itself an indication enabling consumers to identify the origin of the goods and that the mere presence of the common element „food“ in comparable trademarks does not create a likelihood of confusion between the marks of the opponent and the applicant.

The Board agrees with the applicant that, although the comparable marks contain common elements, the marks as a whole are not similar due to the different arrangement and the resulting visual, aural and semantic differences.

The opposition was dismissed.


Decision No. 1812-o

Earlier right/symbol

STENBOCKI MAJA

Opposed trademark

STENBOCK

Opposition to registration of the trademark „ STENBOCK.

The Board notes that “Stenbocki maja” (Stenbock house) cannot be considered as a coat of arms, flag or other national emblem of the Republic of Estonia or as an official mark or stamp.

Despite the shortcomings in the opponent’s arguments, the Board considers that “STENBOCK HOUSE” can nevertheless be regarded as a symbol. The Board assumes that, according to the evidence adduced, the opponent and other executive authorities operating at the same address have used the word element “STENBOCK HOUSE” since the year 2000, including at government press events.

The Board contends that the contested mark mimics the opponent’s symbol. The Board considers that the absence of the word “MAJA” (house) in the contested trademark does not change the important and memorable distinctive part for the consumer and does not reduce the risk of a misleading link between the contested trademark and the opponent’s symbol (thus also including the State Chancellery).

It would therefore be contrary to the public interest to register the contested mark.

The opposition was sustained.


Decisions No. 1828-o and 1829-o

Earlier trademarks

EESTI 200

Opposed trademarks

EESTI 200

ERAKOND EESTI 200

Opposition to registration of the trademark „ EESTI 200.

Opposition to registration of the trademark „ ERAKOND EESTI 200.

The earlier trademark “EESTI 200 + device” is narrowly protected for the organization and conducting of symposiums listed in Class 41. The list of services for the contested marks does not include the organization and conducting of symposiums. The Board considers that, although some of those services may be close to those listed in the registered trade mark, the full range of those services is not attributable to, necessary for, or a substitute for the organization of symposia for consumers.

In the present case, since the conflicting registered mark is registered for specific services used by attentive consumers, and the services of the same kind do not appear in the list of goods and services in the contested mark, the Board considers that there is no likelihood of trade mark confusion.

According to the Board, the reputation or the particularly distinctive character of the earlier combined trademark, which could be damaged or exploited by the use of the contested trademark in various services, has not been established.

The opponents claim that they jointly own the well-known word mark “EESTI 200”, which is established earlier than the contested trademark. The Board does not deny that the evidence submitted shows the idea / initiative of EESTI 200 and the existence of a movement of the same name, but it has not been established that anyone offered a specific product or service under that trademark, distinguishing that product or service from other function. If it has not become a trademark, it cannot be a well-known trade mark. Accordingly, the opponent’s allegations concerning the contradiction of the contested marks in relation to the allegedly well-known earlier mark “EESTI 200” are unfounded.

The oppositions were dismissed.

Court Decisions

Harju County Court, case No. 2-17-141

A claim for revenue from an infringement of utility models or, in the alternative, a claim for compensation for value.

Counterclaim for cancellation of registrations of utility models.

The action was upheld in part, the applicant’s alternative claim was upheld and damages were awarded.

According to the application submitted to the Harju County Court, the applicant owns registered utility models No 00709, 00788, 00789, 00790 and 00848, on the basis of which it is possible to manufacture buildings and modules on a concrete slab foundation that can be raised and lowered, and that can be transported on a car trailer. There are several modular house factories in Estonia, but none of them build buildings on a transportable concrete foundation.

Since the applicant has no objection that utility model No 00709 should be annulled for lack of novelty, the Court upholds the counterclaim of defendant 2 and annuls utility model No 00709.

Based on expert testimonials, the court recognizes the rights of the owner of the utility models with respect to the other two methods and the two devices (utility models No 00788, 00789, 00790 and 00848).

The Court considers that the facts and evidence presented before the Court show that the defendants are acting in bad faith. It is common ground that the applicant did not consent to the defendants’ use of the utility models which it owned, and that the defendants infringed the applicant’s exclusive rights as owner of the utility models. The Court agrees with the applicant that both defendants are jointly and severally liable for the violations.

The Court agrees with the applicant that without the use of the utility models belonging to the applicant, defendant 2 would not have been able to produce and defendant 1 sell the houses on the concrete foundation. In light of the foregoing, the Court jointly and severally orders the defendants to pay the applicant EUR 60,000 in value compensation on the basis of royalties.

The decision has not entered into force insofar as it has been appealed to the Tallinn Circuit Court.

Decisions of the Domain Disputes Committee

Case No. 22-1a-357

Opposed domain name: camfil.ee

The Board explains that it is not a representative or acting on behalf of either party in resolving the dispute. The Board shall not independently search the databases for data that would allow the statement of opposition to be satisfied, unless the opponent has provided such information in the statement of opposition or in the evidence attached thereto. Nor can the Commission replace the opponent in explaining as to which earlier right the opponent relies on at all, since only the opponent and their representative have such a right and competence.

The opposition was dismissed.

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