Newsletter No. 41

DECISIONS OF THE ESTONIAN INDUSTRIAL PROPERTY BOARD OF APPEAL

I OPPOSITIONS

Decision No. 1886-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark „ VICHY BARCELONA + device .

According to the Board, the average consumer of class 32 goods, whose attention is rather below average when choosing and buying these products, does not delve into the details of the brand. Since the price of these goods is relatively low and the purchase is often driven by thirst, the consumer does not spend too much time buying them and does not analyse the goods very thoroughly. The Board considers that, in the case of such a consumer, there is a considerable probability that the contested trademark may be confused with the opponent’s trademark.

According to the Board, although the most prominent, distinctive, and dominant element of both marks “VICHY” has low distinctiveness, it is the very element through which the consumer identifies and remembers the brands and products in question. In comparison, secondary elements such as additional words, the background design of the label or the colour of the bottle cap are insignificant.

It is likely that the consumer considers the disputed trademark to be a redesign, redevelopment, or new designation of a product of the opponent or their related companies, i.e., associates the applicant’s trademark with those belonging to the opponent.

The opposition was sustained.

One Board member dissented in the matter and considered that the opposition should be dismissed. In their opinion, it can be said that since the marks in question have several different, striking, distinctive and dominant elements, “VICHY” is not the most dominant element given that it is a non-distinctive word, and the marks cannot be considered similar only because of the occurrence of this descriptive word.


Decision No. 2064-o

Earlier trademark

Opposed trademark

Opposition to the granting of legal protection to trademark REMEI + device“ (accelerated procedure).

The opponent considers that the applicant’s trademark “REMEI + device“ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “REMEI + device”. In addition, the applicant’s goods in Class 1 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. 1966-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark „Rabarps + device.

According to the Board, both trademarks are visually dominated by their designed word elements, there is no design separate from the word elements. Although both parties are known to produce rhubarb drinks under these brands, this is not evident from the trademarks’ list of goods.

The overall design and impression of the trademarks is different – the rhubarb leaf element at the beginning of the contested mark is particularly striking, and the font, placement and colour scheme of the words that make up the trademarks are also different.

The Board considers that, taken as a whole, the comparable trademarks are different. Therefore, despite the identity of the goods, it is unlikely that the consumer would confuse the trademarks or associate the later mark with the earlier mark or the applicant with the opponent.

In the Board’s opinion, the low inherent distinctiveness resulting from the (partial) descriptiveness of the earlier mark has not been refuted by the evidence of use of the mark presented by the opponent. Despite its hypothetical popularity, the trademark remains rather low in distinctiveness in the part in which it describes the characteristics of the product.

The opposition was dismissed


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