Newsletter No. 47

I Oppositions

Decision No. 2099-o

Earlier trademarks

BEKKER

BEKKERI ARENDUS

BEKKERI KVARTAL

Opposed trademark

Opposition to registration of the trademark “BEKKERI VILLA + device”.

The services covered by the comparable trademarks are either completely overlapping or essentially identical.

The comparable marks are identical or very similar in terms of their dominant, distinctive, and memorable element “BEKKER/BEKKERI”. As a whole, the comparable trademarks are also very similar. The minimal design of the word elements of the contested mark and the image of the villa are not sufficient to reduce the similar overall impression of the trademarks, even for a business customer or an ordinary consumer with a particular level of attentiveness. Further, the use of the nominative or possessive case is not an important distinguishing factor.

During the proceedings, the applicant has tried to prove that the “BEKKER” element of the comparable trademarks is not covered by exclusive rights because it describes a geographical origin or because it is a place name. In this case, it has not been proven that it is a famous or well-known place name for the target group in relation to the relevant services, or that the target group perceives the name as a geographical name at all. In addition, the designation of a geographical entity does not in itself preclude the use of the same designation as a trademark or trademark protection. In this case, it has also not been proven that by giving the opponent’s real estate development the name of the location, the origin of its service would be described in a way that ultimately renders the trademark indistinguishable.

Being the owner of a property of the same name (such as the Bekkeri private harbour in question) can give the opponent additional legitimacy to register a trademark containing the official or historical name of a specific property and to exercise its exclusive right, but the time advantage of the opponent’s trademarks is decisive.

The opposition was sustained.

Decision No. 2001-o

Opponent’s business name

Jooksupartner OÜ

Opposed trademark

Opposition to registration of the trademark “JOOKSUPARTNER SINUGA JOOKSURAJAL + device”.

Since the applicant had not announced their wish to object to the opposition by the end of the extended agreement period, the Board informed the opponent of the start of the preliminary procedure as an accelerated procedure. The applicant reacted only exactly after the two-month deadline had passed, expressing for the first time the desire to contest the opposition, asked to provide the reasons for the objection and to set a deadline for presenting the applicant’s views.

The Board assesses that in this case the reinstatement is justified, considering the purpose and stage of the procedure, the possible ambiguity in connection with the negotiations that took place during the agreement period, in which, according to the representative of the opponents, the current representative of the applicant was not involved, and technical obstacles in receiving e-mails from the Board.

There is no dispute that the business name of the opponent predates the contested trademark. The Board finds that the services of the opposed trademark and the activities carried out and planned under the previous business name are in the same field.

The most visually dominant and memorable part of the opposed trademark is the word “JOOKSUPARTNER” (“running partner”) which is identical to the distinctive element of the earlier business name. The words “SINUGA JOOKSURAJAL” (“on the running track with you”) and the additional design are more difficult to notice and can be viewed as secondary. The overall impression of the opposed trademark is misleadingly similar to the opponent’s trade name.

The Board explains that it is an unsubstantiated position that Jooksupartner’s name and logo (variations) were used by both the opponents and the founders, members, or representatives of the applicant. More justified is the point of view of the opponent, that the NGO of the applicant has used Jooksupartner’s name since its establishment with the tacit consent of the previously created private association of the same name, but such consent does not include permission to register the elements as a trademark in its own name and is revocable.

The opposition was sustained.

II Cancellations

Decision No. 1865-o

European Union trademarks of the applicant

Contested trademark

Application for the cancellation of the exclusive rights of the owner of the international trademark “KORIVKA ROSHEN + device”.

The opponent’s trademark “KOPOBKA + device” is earlier than the contested trademark, but the cancellation procedure before the EUIPO is still ongoing as of the time of the decision. The Board is of the opinion that a decision on the application can only be made based on the EU trademark “KOROVKA + device” without waiting for the decision to be made on the trademark “KOPOBKA + device” at the EUIPO and/or without suspending the proceedings.

The Board considers that in view of the nature, purpose, method of use, conditions of production and sale of the goods in question, as well as their competing or substitutable nature, the goods in question are partly identical and partly similar. There is no dispute between the parties to the proceedings in this regard.

The protection of the contested mark as a whole in the EU is beyond doubt. The question is whether the registration of an earlier trademark is sufficient to prohibit other businesses from using elements referring to the type and characteristics of the goods. According to the Board, the words “KOROVKA” and “KORIVKA” are indistinguishable in the context of candies, insofar as they denote candies with specific characteristics (milk toffees). That the word refers to milk toffees is established both by the evidence provided by the trademark owner and by the fact that the word is translatable. The similarity of such words is not sufficient to cause the comparable generic marks to be interchanged in the eyes of the average consumer. In this case, it is not decisive that these elements are the only or the most prominent parts of the trademark since the distinctiveness of these words is so weak.

The Board agrees with the view that the word elements of the contested trademark are not exhausted with the word “KORIVKA”, but also contain the distinctive and memorable, though not the most visually striking, word “ROSHEN”. In summary, the comparable marks are different as a whole, although there are similar elements with a low level of distinctiveness.

Since the trademarks as a whole are not similar, the identity or similarity of the goods is not sufficient to determine the likelihood of confusion of the trademarks, including the emergence of such an association between the trademarks that would mislead consumers about the origin of the goods or the relationships of their providers.

The application was rejected.

Decisions No. 2063-o and 2065-o

Application for the cancellation of the exclusive rights of the owner of the international trademark “JOI”.

Application for the cancellation of the exclusive rights of the owner of the international trademark “JOI Teeth Whitening”.

In the present disputes, the opponent has claimed that he is the developer of the tooth whitening kit in question and has commissioned the trademark “JOI TEETH WHITENING + device” designed for the purpose of marketing this product in 2019.

From the submitted correspondence, it appears that the opponent agreed to the registration of the contested trademarks to the owner’s name. The Board concludes that the owner did not act in bad faith towards the opponent during the submission of the application for registration of the contested trademark, and it is not relevant from the point of view of resolving the application whether the bad faith could have appeared later.

The opponent has claimed that they own the trademark “JOI TEETH WHITENING + device” which is claimed to have acquired protection due to general recognition. The opponent has mentioned that more than 2,000 units of the teeth whitening kit have been purchased in Estonia. It is not clear what period of turnover the opponent has referred to, but according to the Board, this is insufficient to define the brand as well known.

The opponent has also claimed that under the mentioned circumstances, the trademark acquired general recognition before the contested trademark was registered. It has been proven that during the application and registration of the contested trademark, the goods were sold in the joi.ee online store in the name of the owner, so even if the acquisition of general recognition were to be confirmed, the exact owner of the well-known trademark would remain unclear. Thus, the Board concludes that the opponent does not own a trademark with prior legal protection.

To the extent that it has become apparent that the opponent does not own a trademark with prior legal protection, the likelihood of confusion is also not established.

The applications were rejected.

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