Newsletter No. 49

I Oppositions

Decision No. 2243-o

Earlier trademark

S7

Opposed trademark

Opposition to registration of the trademark “S7 + device“ (accelerated procedure).

The opponent considers that the applicant’s mark “S7 + device“ is so identical that there is a likelihood of confusion with the opponent’s earlier mark “S7”. The contested registration seeks protection for identical and similar goods compared to goods covered by the earlier trademarks.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not notified the Board that he wishes to contest the appeal. 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. 2144-o

Opposition to registration of the trademark “BISRAMOX”.

According to the Board, the applicant’s and opponent’s trademarks are not visually similar. The Board considers that the initial parts of the comparable marks “BISRA” versus “VIGA” – which, according to case law, hold greater weight in the assessment of similarity compared to the final parts of the marks – are clearly different. The Board agrees with the applicant that the opponent’s emphasis on the common element AMOX between the trademarks is artificial.

According to the Board, the applicant’s and the opponent’s trademarks are not phonetically similar either. Although the final syllable [-moks] of the comparable marks is pronounced identically, this is outweighed by the difference in pronunciation resulting from the first and stressed syllables [vi-ga-] versus [bis-ra-].

Regarding the semantic aspect, the Board considers that both trademarks are known to have no meaning. Even if the opponent’s trademark were to be well-known and reputable, it would not follow that the trademark would have a meaning that can be transferred to other marks in the opinion of the Board.

Based on the above, the Board is of the opinion that the trademarks “BISRAMOX” and “VIGAMOX” are generally different, therefore, despite the identity of the goods of class 5 covered by the trademarks, there is no likelihood of confusion or association between the two trademarks. In the present case, according to the Board, the likelihood of confusion is further reduced by the fact that the goods in question are medicines, while in the case of medicines, the level of attentiveness of sufficiently informed, reasonably observant and intelligent consumers is particularly high.

The opposition was dismissed.

Case No. 24-1a-372

Opposed domain name: e-residentsus.ee

According to the opposition, the opponent relies on the EU trademark “e-Residency”, which on the date of the decision was registered in the name of the Ettevõtluse Arendamise Sihtasutus (EAS; Enterprise Estonia). The opponent has explained and proven that they are the legal successor of EAS, and on this basis the opponent is of the opinion that they are also the owner of the EU trademark “e-Residency”.

The Committee accepts that the opponent is the legal successor of EAS. At the same time, the Committee establishes that the opponent cannot be considered a trademark owner, since the opponent is not entered in the EU trademark register as the owner of the “e-Residency” trademark.

According to the evidence presented, the Ettevõtluse ja Innovatsiooni Sihtasutus (EIS; Estonian Business and Innovation Agency) was created by the merger of the KredEx Foundation and EAS in January 2022. The owner of the trademark, EAS, as a merged entity, was deleted from the register of non-profit organizations and foundations. The regulation of the European Parliament and the Council on the European Union trademark states that until the transfer is entered in the register, the legal successor cannot exercise the rights arising from the registration of the EU trademark.

Due to the above, the Committee is not able to consider the EU trademark “e-Residency” as an earlier right of the opponent. This could be done by the Committee after registering the transfer of the trademark in the EU trademark register.

The opposition was dismissed.

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