Newsletter No. 44

I Oppositions

Decision No. 2083-o

Earlier trademark

RABE

Opposed trademark

Opposition to registration of the trademark “RADE + device“ (accelerated procedure).

The opponent considers that the applicant’s mark “RADE + device“ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “RABE”. The contested registration seeks protection for identical goods compared to goods covered by the earlier trademark.

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. 2045-o

Earlier trademarks

DELFI

Opposed trademark

TELFI.EE

Opposition to registration of the trademark „ Telfi.ee “.

The distinctive and dominant part of the opposed mark “Telfi” is visually similar to the earlier word and combined marks “Delfi”. Visually, these comparable word elements differ only in the first letter. Although a difference at the beginning of a mark is considered more important than a difference in the middle or at the end, the long-term continuous use and recognition of the earlier marks is considered to enhance the distinctiveness of those marks. Thus, the Board considers the trademarks to be visually similar. The difference in the first letter is all the less important when comparing the elements phonetically, since in this case the design does not play any role and in Estonian both D and T are pronounced quite similarly.

Conceptually, the primary meaning of the word element of the earlier trademarks is related to the Greek city of Delphi, which is relatively well-known in the context of ancient history. The opposed mark has no primary meaning, but despite the orthographic inaccuracy in the first letter, it can also be associated with the city of Delphi and the oracle.

The opposed trademark is sought to be protected in relation to goods which are identical or similar to the services covered by the earlier trademarks.

In the view of the Board, it is likely that the consumer may confuse the trademarks, mistakenly considering the opposed trademark to be a variant of the opponent’s trademark, a designation of their new service, or see the applicant as a company economically related to the opponent.

The opposition was sustained.

II Cancellations

Decision No. 1943-o

Contested trademark

Application for the invalidation of the exclusive right of the proprietor of the trademark “Nordic Spedition + device”.

According to the Board, the word “Nordic” refers to the North, the Nordic countries and/or Scandinavia in a clear and understandable way for the wide Estonian consumer base, the word “spedition” refers to forwarding, at least in the context of transport services and related services, and these words together mean forwarding to or from the Nordic countries. Thus, the word element of the trademark describes both the content of the services, or at least the broader field, as well as their geographical origin or destination.

However, the Board is not convinced that the contested trademark as a whole is descriptive, and as such should remain freely usable by all entrepreneurs.

The Board admits that a hypothetical image of a mere arrow may be of very weak or even no distinctiveness, but in this particular case it is not a mere image of an arrow – the square used is shaped like a road sign with slightly rounded corners, the arrows inside the square are also not classified as simple shapes, at least not in combination with the background square to which they are inextricably linked in the design of the contested trademark.

Since the contested trademark does not consist only of non-distinctive elements, the at least minimal distinctiveness of the trademark as a whole is also not in doubt.

The invalidation application was dismissed.

III Appeals

Decision No. 2105-o

Partially refused trademark

Appeal against the partial refusal to register the trademark “Velvet + device”.

The Board agrees with the views of the Patent Office that the trademark “Velvet + device” as a whole is descriptive and therefore indistinguishable in relation to goods where the word “velvet” indicates either the type and characteristics of the goods themselves (the goods are partially or completely made of velvet) or, alternatively, the purpose of the goods (the goods are intended for use in connection with velvet, for example for cleaning velvet products).

The Board considers that the Patent Office’s refusal to register the trademark “Velvet + device” is justified in part, but not in the case of all refused goods.

In the Board’s view, the consumer makes a connection between certain goods and the element “velvet” immediately and without thinking, i.e. simply by looking at it, without the need to delve deeper or analyse the circumstances. Also, the velvet material (or the use of the goods on velvet material) may be important or otherwise interesting to consumers in the case of these goods.

The Board agrees with the Patent Office that the design of the applicant’s trademark – white letters on a blue background – only highlights the descriptive word element and does not divert attention from its descriptive meaning. Under these circumstances, the Board considers that the applicant’s trademark “Velvet + device” is descriptive as a whole in relation to these specific goods.

However, the Board agrees with the applicant that in the case of certain other goods (i.e. disposable wipes impregnated with cleansing compounds for use on the face; cotton puffs impregnated with make-up removing preparations; cotton pads; disposable cloths made of non-woven fabrics; scouring pads), making goods from velvet is not an important or relevant feature (affecting the consumer’s choice) for the consumer, or velvet as a product material would even be curious and surprising. In relation to such goods, there is no reason to regard the element “velvet” as descriptive of the goods.

The appeal was partially sustained.

Case No. 21-1a-364

Opposed domain name: starbucks.ee

According to the Committee, there is no evidence to confirm the registrant’s right or legitimate interest in the opposed domain name. The opponent owns a trademark of the same name, which is registered both in Estonia and in the European Union. In addition, it is a well-known trademark that is identical to the opponent’s earlier right. The registrant has not proven that they have made preparations to take the domain name into use. This aspect is also confirmed by the fact that the registrant has registered 51 different domain names in their name as of the filing of the opposition. It is not credible that the registrant has registered all 51 of the aforementioned domain names in their name with the desire to start using them all. Further, the registrant does not have the opponent’s consent to use the domain name.

The opposition was sustained.

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