We invite you to have a look at the 45th issue of Turvaja newsletter.
Newsletter No. 43
Decisions of the Estonian Industrial Property Board of Appeal
Decision No. 1782-o
Opposition to registration of the trademark „GATTART“.
The Board finds that the goods marked with the opposing trademarks are mostly of the same type, and in the case of herbicides, they are clearly different. When comparing goods, their marketing method is also relevant: the goods in question may be sold to the end consumer in a pharmacy, less often in a separate health store or in other (larger) stores, but in a separate department within those stores.
The opponent has argued that the comparable marks are similar because of the matching element ‘-ATTAR-‘. The Board does not agree with this claim. Estonian consumers generally do not understand Arabic, and therefore there is no reason why the first syllable of a trademark should be secondary for the consumer. Visually, said elements “GAT” and “ALA” are completely different. Although there are visual similarities in the remaining parts of the trademarks, the perception of this similarity holds less weight than the difference in the beginnings and in the whole of the marks. Phonetically, the trademarks are also not similar, according to the Board.
The Board considers the trademarks to be so different that the average consumer will not confuse these trademarks in a market situation and when using a medicine or other product. It is therefore even less likely for there to be confusion between the trademarks for a specialist in the field of the respective goods.
The opposition was dismissed.
Decision No. 1990-o
Appeal against the refusal to grant legal protection to the trademark “€$ + device“.
According to the Patent Office, it is not legitimate to monopolise an element or symbol referring to the type and purpose of a service in the name of one company. The elements indicating the type and characteristics of the service must remain freely available to all potential market participants.
The opponent expressed doubt that the consumer perceives the contested mark as descriptive. They cited the fact that the trademark has received legal protection as a basic registration in Poland and subsequently in several other (EU) countries.
The Board does not agree with this argument. First, the Patent Office has provided data on the fact that several other EU countries have refused to grant legal protection to the contested international trademark. As the Board has repeatedly stated in its decisions, the practice of other countries in recognizing the protectability of a specific trademark is not binding or decisive in the application of Estonian trademark law. The Board also draws attention to the fact that, both in Poland and in some other countries where the disputed trademark has been protected, the euro (not to mention the dollar) is not the main currency, so the perception of these symbols may be different.
According to the Board, it is not a mere hint or connection, but the currency symbols with a minimal design unambiguously convey a message describing the specified money-related services and the characteristics of their provision, the right to use of which cannot be monopolised by anyone in accordance with the public interest.
The Board considers that the disputed trademark, which consists of monetary symbols describing the services in question, designed in a way that does not add distinctiveness to the trademark, is not able to fulfill the main function of the trademark to distinguish the services of one company from the similar services of other persons.
The appeal was rejected.
Decision No. 2098-o
Appeal against the refusal to register the trademark “EST kinnisvara + device“.
The opponent considers that the Patent Office’s application of the joint notice CP3 of EU member states (Joint notice on the common practice regarding distinctiveness – figurative trademarks containing descriptive/non-distinctive words) is unlawful, since the application of CP3 can be considered as a restriction of rights and a violation of the principle of proportionality, while all kinds of rights can only be restricted in accordance with the constitution and according to the principle of proportionality, restrictions must be necessary.
In relation to the joint communication CP3, the Board maintains the position that taking the joint communication into account and being guided by its principles when assessing the circumstances excluding the legal protection of trademarks is legitimate.
The Board agrees with the views of the Patent Office that the trademark “EST kinnisvara + device” (“kinnisvara” is real estate in Estonian) as a whole is descriptive of the services and, as a result, is not distinctive. According to the Board, it is beyond doubt that a sufficiently informed, reasonably attentive and intelligent Estonian consumer perceives the trademark – even more so in combination with the image of the Estonian map – as a reference to real estate services provided in Estonia or related to Estonia in some other way.
The Board agrees with the Patent Office that the specific design solution of the map – the Estonian contour map is made up of blue dots – gives the opponent’s trademark a certain stylization, but is still inherently indistinguishable and does not add distinctiveness to the mark as a whole.
The Board agrees with the Patent Office that the materials submitted by the opponent can, as one component, contribute to the proof of the acquired distinctiveness or well-knownness of the mark, while these materials alone do not provide a basis for claiming that the opponent’s mark does not describe the services under review for the Estonian consumer and that it has distinctiveness as a trademark of a specific company.
The Board does not consider the complaint of the opponent to the Patent Office that the latter has recommended the opponent to submit additional evidence, such as market or consumer research, during the expert examination procedure, to be justified. The Board considers that the relevant recommendations of the Patent Office are entirely reasonable and in accordance with the principle of good administration.
The appeal was rejected.
Decision No. 1970-o
Appeal against the partial refusal to register the trademark “FILTER ENERGY WATER SOLUTIONS POWERING YOUR INDUSTRY +device”.
The Board admits that by reading the element “FILTER” together with the other words “ENERGY WATER SOLUTIONS” forming the trademark, the resulting conceptual whole may be descriptive of the goods and services in question. However, the Board considers that all goods and services for which the Patent Office has refused to register a trademark are not related to energy production or saving through water filtration, which the Patent Office has focused on in its decision.
Since the Board finds that the Patent Office has not comprehensively evaluated the elements of the trademark and, based on that, the descriptive character of the trademark as a whole in relation to all the refused goods and services, the appeal is therefore partially sustained.
Further, according to the opponent, the descriptiveness of the slogan “POWERING YOUR INDUSTRY” is questionable. The Board finds that the visually and conceptually distinct element of the disputed trademark is, taken separately, sloganeering and generally praises all kinds of goods and services, i.e. adequately or excessively describes their quality.
According to the Board, the design of the disputed trademark is minimal, manifesting itself only in practically no design and in different sizes and placements of words in solid or even formal black and blue tones. Despite the minimalism of the design, the Board considers that the Patent Office has not convincingly substantiated why the verbal elements of the trademark in its collection, i.e. the trademark as a whole and taking into account the design, cannot fulfil the function of origin of the trademark.
The Board further concludes that the lack of distinctiveness of the trademark must also be reassessed.
The opponent has referred to its earlier trademarks “FILTER” (reg no. 14608) and “FILTER + device” (reg no. 48542), which it claims are in long-term use. Since the opponent has not provided evidence during the contested trademark proceedings regarding the use of these marks, in particular the distinctiveness acquired as a result of their use, the Board cannot take this argument into account when making its decision.
The appeal was partially sustained.
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