Newsletter No. 52

I Oppositions

Decision No. 2200-o

Opponent’s trademark

VIKING

Applicant’s trademark

Opposition to registration of the trademark “VIKING BURGER + device“.

The applicant believes that its trademark has become well-known and, as a well-known trademark, is earlier than the opponent’s trademark. The applicant also finds that its trademark has acquired a clear distinctive character and reputation. The Board emphasises that the reputation and other circumstances of the later trademark, even if proven, do not give the applicant any special rights or negate the fact that earlier rights exist in relation to the trademark as of the date of filing for registration. Registration of a well-known trademark is permissible provided that the trademark does not infringe the earlier rights of someone else as of the date of filing for registration. The same principle applies analogously to a trademark considered as an object of copyright. However, copyright protection in itself does not confer any special rights upon registration of a trademark.

The Board finds that the applicant’s trademark “VIKING BURGER + device” is similar in general and as a whole to the opponent’s trademark “VIKING”. The visual similarity of the trademarks results from the inclusion of the identical word VIKING. The trademarks as a whole are not phonetically identical, but they are nevertheless similar. Although the inclusion of the element “BURGER” in the applicant’s trademark also means from a semantic point of view that the trademarks as a whole are not semantically identical, they are nevertheless semantically similar.

The Board also agrees with the opponent that the services in Class 43 covered by the applicant’s trademark are identical to the services in Class 43 covered by the opponent’s earlier trademark.

It must also be considered that the word element “BURGER”, which is in the second place in the word part of the applicant’s trademark, is a descriptive and non-distinctive element in the context of the services in Class 43.

The Board agrees with the opponent that the target group of the services covered by the comparable trademarks is a broad consumer group whose level of attention when exposed to the services can be considered average and not high.

The opposition was sustained.

II Cancellations

Decision No. 2273-o

Earlier trademark

Opposed trademark

Application for the invalidation of the exclusive right of the proprietor of the trademark “FUN FRUIT + device”.

Comparing the goods of the earlier and opposed marks, particularly in Class 32, the opponent has found that they are similar or identical. The Board agrees with the opponent. Since the goods of the comparable marks are intended for use by everyone and are relatively low-priced, their consumers cannot be expected to make a detailed comparison or pay close attention to the trademarks used to designate the goods.

The comparable marks are composite marks. Although the visual, as well as the phonetic and conceptual similarity of the marks is influenced by other verbal and design elements, the Board finds that in the context of the goods concerned, the word “FRUIT” and the images of fruits have less weight due to their lack of or extremely weak distinctiveness. Comparing the word elements of the marks as a whole, it can be found that the first element in the word combinations “FUN light” and “FUN FRUIT” is phonetically and conceptually identical and visually very similar, while the second element is either not noticeable or is in itself non-distinctive or has a weak level of distinctiveness.

In conclusion, the Board shares the opponent’s view that the identical dominant word element “FUN” of the comparable marks makes the marks as a whole very similar.

Given the high degree of similarity between the comparable marks and the identity or high degree of similarity of the goods in Class 32 covered by them, it is likely that the average consumer, relying on an incomplete memory of the earlier sign, may consider the contested mark to be the earlier mark, its development or the mark of its proprietor or an undertaking related to it. There is therefore a likelihood of confusion or association between the comparable marks due to their similarity and the identity or similarity of the goods.

The invalidation application was sustained.

III Decisions of the Domain Disputes Committee

Case No. 25-1a-379

Opposed domain name: e-gastro.ee

The evidence submitted by the opponent shows that it owns the business name OÜ Gastro Suurköögid and the trademark valid and registered in Estonia gastro suurköögiseadmed kaupluste ja ladude sisustus + device“, in which the word “gastro” is dominant. The opponent’s business name contains the word element “Gastro Suurköögid”, in which the distinctive part is primarily the word “Gastro”. Therefore, the opponent owns the prior right. The Committee is of the opinion that the disputed domain name e-gastro.ee is misleadingly similar to the opponent’s prior right.

The registrant has used the domain name “balticmaster.ee”, which coincides with its business name, for a long time in its business activities and only many years later decided to register and use the contested domain name “e-gastro.ee”, which contains the domain name “gastro.ee” registered and used for a long time by the registrant’s competitor, the opponent.

In this regard, the Committee believes that the word “gastro” is not a descriptive or common word that could give rise to the presumption of the registrant’s right or legitimate interest in the domain name. The Committee has no evidence based on which it could conclude the meaning of the word “gastro” (gastronomy) referred to by the registrant here and the connection with the referred field of activity. And even if it were to be proven that the word “gastro” is a descriptive and commonly used word, this does not automatically result in the registrant’s right or legitimate interest in the domain name. The Committee believes that in such a situation, the registrant’s right or legitimate interest can be concluded only if the registrant uses the domain name solely to describe the relevant goods or services. Therefore, the contested domain name is more likely to be associated with the opponent and its prior right.

The opposition was sustained.

IV Court Judgments

Harju County Court

Criminal Case No. 1-25-780

The accused was accused of selling clothing and footwear marked with various trademarks (including Tommy Hilfiger, Nike, Fila) on the online social network Facebook and Yaga, whereby the goods in question were, according to the trademark owners, identical to the trademark that had received legal protection on the basis of registration or marked with elements essentially indistinguishable from it, i.e. counterfeit products.

The accused delivered the products offered for sale, mainly footwear marked with the Tommy Hilfiger and Nike trademarks, from Poland, stored them at their residence, advertised the goods for sale and accepted purchase orders on Facebook and Yaga.ee. The accused was aware that the goods they offered for sale were not manufactured by or with the permission of the respective trademark owners. The accused sold the products marked with the Tommy Hilfiger and Nike trademarks significantly cheaper than the original products – at prices that mainly ranged from 11 to 49 euros, thus earning a financial profit. Thus, the accused, for the purpose of trade, transported goods bearing identical markings to registered trademarks to the Republic of Estonia without the permission of the trademark owners, stored and resold them to other persons, thereby earning financial gain in an amount exceeding twenty minimum daily rates, i.e. 200 euros.

The accused has earned illegal income by violating the exclusive rights of trademark owners and thus caused material damage to trademark owners by illegally using the trademarks.

According to the agreement concluded between the accused, the defense attorney and the prosecutor, the accused was found guilty.

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