Newsletter No. 48

I Oppositions

Decision No. 2140-o

Earlier trademarks

​KOCH 

​KOCH AMBER 

​KOCH ONE GIN 

​KOCH NICECREAM 

​KOCH GOLD 

Opposed trademark

Opposition to registration of the trademark “KOCHARI + device“ 

The Board agrees with the opponent that the applicant’s mark „KOCHARI + device“  is similar to the opponent’s marks “KOCH” and “Koch + device”. 

The applicant’s mark contains more design elements compared to the opponent’s marks, but the word element “KOCHARI” is displayed in large letters, prominently in the center of the mark.  

The Board considers that the comparable trademarks can also be considered phonetically similar. The applicant has not provided convincing arguments or evidence as to why the same consumer should pronounce the opponent’s mark as [kohh] on the one hand and the applicant’s mark as [kochaar] on the other hand. 

As the applicant has pointed out, the word “kochari” refers to a folk dance from the Armenian highlands. At the same time, the applicant himself admits that the average Estonian consumer probably does not know this meaning. The Board therefore finds that the average Estonian consumer perceives both the word “KOCH” and the word “KOCHARI” as meaningless words, and due to the lack of meaning, the opponent’s and the applicant’s trademarks are therefore not semantically comparable. 

The comparable goods (alcoholic beverages) are of the same type, to a large extent identical, and in the Board’s opinion there is a likelihood of confusion, including association. 

The opposition was sustained.

Decisions No. 2089-o and 2013-o

Opposition to registration of the trademark “BOLT“ 

The comparable trademarks “BOHLT” and “BOLT” are visually and phonetically similar. Semantically, i.e. conceptually, the comparable trademarks are rather different, as the trademark “BOHLT” is known to have no meanings, while the trademark “BOLT” may be perceived as an English word with several possible meanings in Estonian (e.g. bolt, arrow, lightning). Since the opponent’s earlier mark is a meaningless word, it is precisely the opponent’s mark that has a stronger inherent distinctiveness than the applicant’s mark, the conceivable meanings of which may suggest the goods being marked. Overall, the opposed marks are similar based on their visual and phonetic similarity. 

Comparable goods (vehicles) are of the same type, largely identical.  

The applicant of a later trademark cannot limit the scope of the exclusive right of the owner of the earlier trademark based on the use of his mark but can acquire the exclusive right to his own trademark only in the case and to the extent that the contested trademark does not conflict with the earlier trademark. 

Consumers who do not have the opportunity to compare the trademarks in the market situation may consider the push-bikes and bicycles or scooters offered by the applicant as coming from the opponent, who has a valid exclusive right to use its trademark on these goods. 

The oppositions were sustained.

Decision No. 2025-o

Opposition to registration of the trademark “VOX“ 

The Board does not agree with the opponent that the goods of the opposed trademark (generally milk, coffee, and sugar) compete with or complement the goods of the earlier trademark (generally meat products, processed fruits and vegetables, fatty sandwich toppings, sweets, bakery products and flour products of different origins).  

Goods are complementary when they are closely related to each other, so that one is inescapably necessary or important for the use of the other, which is why consumers may believe that these goods are manufactured, or these services are provided by the same company. The applicant’s goods are not necessary for the use of the opponent’s goods or vice versa. 

The Board is of the opinion that the nature of the comparable goods is different and that the opponent’s goods do not replace the applicant’s goods or vice versa, nor do they compete with them in any other way. 

Since the opposed trademark is visually similar to the earlier mark by a low degree but phonetically and semantically different from it, the comparable marks are ultimately different. The opponent has not presented statements or evidence from which it is evident that its trademark has a reputation or heightened distinctiveness. According to the Board, there is no likelihood of confusion between the trademarks. 

The opposition was dismissed.

Decision No. 2180-o

Earlier trademarks

APPLE

APPLE TRADE IN

APPLE CASH

APPLE CARD

APPLE DAILY CASH

Opposed trademark

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Opposition to registration of the trademark “APPLEHEAD + device“ 

The opponent is of the opinion that the services (in classes 36, 40 and 42) of the opposed trademark are identical or similar to the services of the opponent’s previous trademarks, and the Board agrees with the opponent’s views. 

The distinctive and dominant element of all earlier trademarks is the word “APPLE”. The same word also appears in the composition of the opposed mark, at the beginning of its verbal, dominant and more memorable element “APPLEHEAD”. The same part of the word is also pronounced identically and, being in a dominant position, makes the comparable trademarks phonetically similar. The element “APPLE” is very likely understandable to the Estonian consumer. The applicant’s explanation that the concept of his trademark is related to the name of an old breed of Siamese cat, which is emphasized by the design element of the opposed trademark, is not very well known to the average consumer, and the emergence of a perceived connection with the cat breed is rather unlikely, according to the Board. 

The Board also considers that the applicant has not submitted any statements or evidence that refute or call into question the arguments and evidence of the opponent, even though the existence of such a possibility has been explained to him and the deadline for submitting the opinion has been given. Among other things, it can be assumed that the applicant does not wish to object to the opposition. 

The opposition was sustained.  

One of the members of the Board dissented in the matter, finding that the opposition was not justified. In their opinion, the comparable trademarks are not semantically, phonetically, and visually similar to such an extent that there could be a likelihood of confusion on the part of the consumer, as the word “APPLEHEAD” in combination with the image of a Siamese cat is significantly different from the “APPLE” trademarks.

II Appeals

Decision No. 2116-o

Disputed trademark

Appeal against the refusal to grant legal protection to the trademark “EMPOWERING INNOVATION TOGETHER + device”. 

The Board agrees with the Patent Office that due to the meanings of the English words that make up the trademark “EMPOWERING INNOVATION TOGETHER”, in the context of the class 41 services covered by the trademark application, the applicant’s trademark is descriptive of the relevant services.  

The applicant’s mark is completely devoid of design elements that could divert the consumer’s attention from the descriptive and indistinguishable meaning of the word element. The Board finds that even if all consumers do not know the exact meaning of potentially the most complex and less common word – empowering – of the three words included in the applicant’s trademark, the consumer nevertheless recognizes the root word “power” contained in this word, knows its meaning in Estonian, and perceives the conveyed message as something that talks about giving power or authority to innovation together.  

The applicant has pointed out that its trademark is registered in 30 countries around the world. The Board considers that if the applicant’s trademark has been considered registrable in English-speaking countries, this has been done based on a different practice in dealing with the descriptiveness of trademarks in the respective countries. The Board adds that, based on WIPO data, registration of the applicant’s trademark has also been refused in many countries. 

The appeal was rejected.

Dispute No. 24-1a-369

Disputed domain: e-maxima.ee  

According to the Committee, the disputed domain name gives the impression that it is the official representation of the opponent “MAXIMA Eesti OÜ”, owner of the MAXIMA business name and trademarks or a person related to the owner of the business name or trademarks. Being aware of the existence of both the business name and the trademarks, the registrant had to understand that by combining the dominant element of the opponent’s business name or trademarks only with the sign “e-” and trying to offer goods and services similar to or related to the opponent through the domain, he could be subject to the justified indignation of the owner of the MAXIMA business name and trademarks. To avoid this, the registrant could have sought consent from the owner of the trademarks and/or business name before registering the disputed domain. There is no dispute that the opponent is not bound to the registrant by license, contracts or in any other way and did not give their consent to the registrant to register the domain name “e-maxima.ee”. 

Based on the above, the Committee finds that the domain name was registered without the registrant having the right or legitimate interest in the disputed domain name. 

The appeal was sustained, the domain name e-maxima.ee was handed over to the opponent.

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