Newsletter No. 51

I Oppositions

Decision No. 2222-o

Earlier trademarks

POSTI

Opposed trademark

POSTIKAS

Opposition to registration of the trademark “Postikas”.

The Board considers that, in view of the partial identity and partial similarity of the goods and services covered by the comparable trademarks and the visual, phonetic and conceptual similarity of the marks, there is a likelihood that the consumer will confuse the opposed trademark with the opponent’s earlier trademarks or mistakenly associate the applicant with the opponent.

It is important that the design of the earlier combined marks is secondary to the dominant word “posti”, while the earlier word mark “POSTI” is very similar to the contested word mark “Postikas”. Due to this similarity, consumers may mistakenly believe that the applicant’s mark is a modification of the opponent’s marks, for example a vernacular version, that it belongs to the opponent, or that the applicant operates in cooperation with the opponent.

The degree of similarity between the specific comparable marks varies, so the combined mark “posti LOGISTICS + device” is slightly less similar to the contested mark, while the word mark “POSTI” is very similar. Overall, however, the trademarks are similar to the point of confusion, since the lower degree of identity and similarity of the goods and/or services is offset by the greater similarity of the word marks, and conversely, the lower degree of similarity of the combined marks and the contested mark is offset by the greater identity and similarity of the goods and services concerned.

The opposition was sustained.

II Appeals

Decision No. 2157-o

Appeal against the refusal to register the trademark “MASTERCHEF”.

The Board agrees with the applicant that, without any need for reflection or speculation, the trademark “MASTERCHEF” does not provide any information about the applicant’s goods, either directly or by highlighting any characteristic feature. The Board considers that the word element “MASTERCHEF” may create positive images and associations in the minds of consumers in relation to the goods it designates, but this means that the applicant’s trademark is hinting and suggestive, and not directly descriptive. However, it is not lawful to refuse registration of trademarks that are merely suggestive.

Accordingly, the Board is of the opinion that, in the case of the word “MASTERCHEF”, it cannot be assumed that the relevant public will regard that word as a characteristic of the goods which the relevant public will easily recognise.

The Board also considers relevant and important in the present case the applicant’s submission that, in the case of its trademark, no absolute grounds for exclusion of legal protection have been found to exist in respect of the same goods in many other European countries, in particular in the United Kingdom, where English is the native language of the population.

In the Board’s opinion, the above applies both if the relevant consumer group is considered to be ordinary consumers and if they are considered to be professionals.

The appeal was sustained.

Decision No. 2194-o

Appeal against the partial refusal to register the trademark “MÜRAFOOR”.

The Board agrees with the Patent Office that in the context of the goods in Class 9 refused by the contested decision – which can be generally characterised by the term “measuring devices” – the compound word “mürafoor” (“müra” meaning noise and “foor” meaning traffic light in Estonian) is perceived by Estonian consumers as a warning light informing about excessively loud sound or noise. The word element “mürafoor” therefore describes a certain type of noise measuring device.

The main dispute between the parties to the proceedings concerns which devices can be considered as measuring devices under Class 9. In this regard, the applicant essentially finds that only devices narrowly defined in legislation should be considered as measuring devices. The Board finds that the fact that a device may not be a proper measuring device under the conditions set out in some legislation does not mean that such a device would not be a measuring device from the perspective of ordinary people.

In the Board’s opinion, there is no fundamental difference whether, as a result of measuring the noise level, a green, yellow or red light lights up on the device or a number “lights up” on the device’s screen/display, which provides information about the ambient noise level in decibels. In both cases, the noise in the surrounding environment must first be measured. The Board does not share the applicant’s view that consumers perceive only such devices as measuring devices that display numerical values ​​of the measured physical quantity on the instrument display. The Board acknowledges that there may be significant differences between different measuring devices in terms of how appropriate, useful or even permissible one or another device is for noise measurements requiring specific accuracy or professionalism. At the same time, the fact that a device operating on the noise traffic light principle may be unsuitable (and not in compliance with the requirements of the legislation) in situations requiring high accuracy and professionalism does not diminish the inherent function of such a device as a noise measuring device. The measuring devices in Class 9 covered by the applicant’s trademark application are mentioned in general terms and are not limited by more specific conditions, such as the presence of a display or scale, the need for calibration, etc. The trademark is therefore descriptive of the relevant goods.

The appeal was dismissed.

Decision No. 2149-o

Appeal against the refusal to register the trademark “Sheetsplint”.

The Patent Office finds that the applicant’s trademark is a compound word formed from two English words – sheet and splint – and that the meaning of these words is understandable to the average Estonian consumer. The Patent Office emphasises that during the trademark examination it has been established that several undertakings produce splints sold in the form of sheets, to which the user gives the necessary shape themselves, which is why the words “sheet” and “splint” can be used to describe the goods specified in Class 10.

The Board does not agree with the positions of the Patent Office. In the opinion of the Board, the English word “splint” is a word that individuals in Estonia do not often encounter and the meaning of which is not part of the so-called everyday knowledge of consumers. Therefore, the average Estonian person, including the average consumer of goods in Class 10, presumably does not know the meaning of the word “splint”. In the opinion of the Board, the English word “sheet” is presumably more familiar to Estonian consumers, including its meaning. The Board notes, however, that the word sheet has multiple meanings in Estonian and there is no reason to believe that one meaning is more familiar to Estonian consumers than the other.

Secondly, the Board finds that even if it were assumed that Estonian consumers are well-aware of the meaning of both words in this context, there is still no reason to consider the compound word “sheetsplint” to be descriptive of the applicant’s goods. In the Board’s opinion, it is not possible to draw unambiguous conclusions about the specific properties and uses of the goods based on the knowledge that a splint is in the form of a sheet or the like. The Board also notes that although the Patent Office has correctly found that the mere fact that the compound word “sheetsplint” does not appear in dictionaries does not infer non-descriptiveness, it is still more appropriate to assume that a word not included in dictionaries is more likely to have no specific meaning for individuals than vice versa.

In the Board’s opinion, the above applies both in the case where the relevant public is ordinary consumers as well as in the case where the public is medical professionals.

Since the trademark “Sheetsplint” cannot be considered descriptive, the Patent Office’s argument that this element must remain freely usable by all persons due to the public interest is not relevant.

The appeal was sustained.

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