Newsletter No. 45

I Oppositions

Decision No. 2167-o

Opposition to registration of the trademark “UREACTIV“ (accelerated procedure).

The opponent considers that the applicant’s mark “UREACTIV“ is so similar that there is a likelihood of confusion with the opponent’s earlier mark “URACTIV”. 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. 1976-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark “Vivin POWDER CANDLE + device”.

There is no dispute that both trademarks are intended to denote identical goods – candles. The consumer of such goods is an ordinary consumer, whose attention and memory are generally not heightened when choosing the product and making a purchase decision.

It is generally known that a good level of understanding of English is widespread in Estonia. “Powder candle” is a word combination that belongs to the basic vocabulary of the English language. According to the Board, these circumstances leave no doubt that the meaning of the term “powder candle” is understandable for Estonians, and as a designation for candle products has a descriptive and non-distinguishing meaning that indicates the type and characteristics of the goods.

Visually, the word Vivin is prominent in the contested trademark, while the word Candle is prominent in the cited trademark. These dominant elements are neither identical nor similar. Thus, the trademarks are visually similar only in terms of secondary, descriptive elements, but different as a whole.

Despite some phonetic overlap, it is important that the “Vivin” element of the contested mark is distinctive and does not simply describe the type of goods and a specific characteristic, as the overlapping part does. According to the Board, the phonetic similarity of the trademarks is therefore irrelevant.

Conceptually, the trademarks are different insofar as the overlap in terms of the elements “candle” or “powder candle” comes down to the naming of the goods and their properties. Thus, the conceptual similarity of the trademarks also consists only of the secondary overlap of descriptive elements.

The opposition was dismissed.

Decision No. 2010-o

Earlier trademarks

KOCH TULIVESI

Opposed trademark

Opposition to registration of the trademark “Tulivesi + device”.

Although it is obvious and beyond doubt that the element “TULIVESI” (firewater) is identical in both the opponent’s and the applicant’s trademarks, in the Board’s opinion, this is not sufficient to conclude the similarity of the trademarks as a whole. The Board agrees with the applicant that in the context of the goods and services covered by the trademarks, the word “TULIVESI” is a descriptive and non-distinctive element, it is a colloquial term used to designate strong alcoholic beverages, especially vodka or spirits.

The Board does not agree with the opponent that the visual “language” of the marks as a whole is quite similar. Among other things, the flame image in the opponent’s trademarks and the crown image in the applicant’s trademark are not similar.

There is also no evidence that the opponent’s trademarks, and especially the element “TULIVESI” contained in them, have acquired distinctiveness, reputation, or are renown because of their use.

It is also irrelevant that, according to the alcohol register, the opponent is currently the only company in Estonia that uses the name “TULIVESI” as the name of an alcoholic product.

The applicant applied to the Patent Office to consult the register file of the word mark “TULIVESI” of the opponent. According to the Board, the purpose of allowing access to such a file is to allow a potential infringer of the exclusive right to see the circumstances related to the registration of the trademark, for example, whether and how the question of distinctiveness of the trademark has arisen in the registration procedure. It can be seen from the materials of this case that the opponent’s objections to the applicant’s trademark are mainly based on the inclusion of the only common element “TULIVESI”. Therefore, the Board considers the applicant’s request to know whether and how the Patent Office handled the distinctiveness of the element “TULIVESI” in the examination procedure of the opponent’s word mark to be relevant and justified, despite (or rather even because of) the fact that the said trademark was ultimately not registered.

The Board also agrees with the applicant that the applicant has submitted factual information to the Patent Office in the application for inspection of the file, therefore, in the Board’s opinion, the applicant has not gained access to the file by providing false information or in other illegal ways.

The opposition was dismissed.

Tallinn Administrative Court, Administrative Case No. 3-21-2883

Disputed sign

In this administrative case, the injunction-warning of the Ministry of Defence has been challenged and its cancellation requested. With this injunction, the appellant was obliged to stop using the “AZeTA” logo in the online pharmacy with the address www.azeta.ee and in other public spaces in a manner and in colours that are misleadingly similar to the red cross emblem.

The administrative court took the view that the appeal is not justified. There is no dispute that the Ministry of Defence exercises national supervision over the use of the name and emblem of the Red Cross, and thus the provision of the corresponding assessments is primarily within the competence of the above-mentioned Ministry.

For the legal use of the Red Cross emblem on the territory of Estonia, it is necessary to be guided by the provisions of the Geneva Convention, according to which the emblem or sign “Red Cross” or “Geneva Cross” or any other element similar to it may not be used by individuals, public or private organizations, or companies, except for persons entitled to do so by the Convention, for any purpose and regardless of the date of its introduction. The requirement to develop precise similarity criteria does not appear from the text of the convention itself.

The respondent has proceeded from the competence awarded to them. Although issues requiring an assessment of similarity always remain to some extent debatable, when considering the “AZeTA” logo related to this dispute to be misleadingly similar to the red cross emblem, no fundamental or obvious errors of judgment could be observed.

The appeal was rejected.

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