Newsletter No. 46

I Oppositions

Decision No. 2106-o

Opposition to registration of the trademark “Lorupi Kvartal”.

Both the earlier trademark and the opposed trademark are word marks. The earlier trademark consists of one distinctive element “LORUP”, which is also the visually dominant, the only pronounceable and memorable element of the trademark. The meaning of this word is related to the glass factory founded by Johannes Lorup, the former location of which is owned by the opponent. Further, according to the Explanatory Dictionary of the Estonian Language, it is a colloquial synonym for the word “loru” (goof). The opposed trademark consists of the elements “Lorupi kvartal”, the first element of which is the possessive form of the same word or name “Lorup”. The second element of the contested mark, “kvartal” (quarter), has very low distinctiveness, at least in relation to real estate services. Only the more distinctive element “Lorupi”, in which the earlier trademark appears in its entirety, can be considered visually dominant.

Also phonetically, the earlier trademark is included in its entirety in the opposed trademark.

Therefore, the most dominant and distinctive elements of the two trademarks are identical.

Since the similarity of the trademarks in question lies in the substantive identity of their distinctive element, both visually, phonetically, and in relation to their meaning, the comparable marks are very similar, including to a professional consumer.

Even a professional consumer is generally not able to compare trademarks side by side. Thus, it is likely that the real estate, accommodation, and catering services offered by the applicant will be associated with the ancillary services offered by the opponent, or there is a likelihood of confusion between the two trademarks.

The opposition was sustained.

II Cancellations

Decision No. 1998-o

Contested trademark

Application for the revocation of the rights of the owner of the “target board image” figurative mark.

The Board recognizes that there is no evidence indicating the use of the trademark “target board image” in relation to goods and services in classes 9, 16, 38 and 41. Therefore, in relation to these goods and services, the application is subject to approval in any case, and the owner’s exclusive right to the trademark must accordingly be revoked.

The dispute between the parties lies in whether the trademark has been used in connection with the class 35 “retail services”. The opponent claims that the use of the opposed trademark in Estonia has been symbolic and not real, whilst the owner considers that they have proven the actual use of the trademark in Estonia in relation to the aforementioned services.

In the Board’s opinion, the evidence presented by the owner of the trademark proves the actual use of the “target board image” trademark in Estonia in connection with retail services.

As can be seen from the owner’s press releases, the online store target.com was opened as international (intl.target.com). The international platform was made available in more than 200 countries and regions, including the introduction of the possibility of ordering and delivery of goods to European Union countries through the e-shop. According to the Board, it can be concluded based on the provided evidence that the expansion of the owner or its parent company to international markets (including Estonia) with its retail services was deliberate and purposeful, not accidental as claimed by the opponent.

The Board notes that the use of a trademark does not have to be quantitatively vast to be considered actual use; the de minimis rule has not been established.

The fact that the sales numbers of the online store in Estonia are small may mean that the e-shop has not been well-received by most Estonian consumers. However, this does not mean that the use of the opposed trademark was not genuine. Also, it cannot be concluded from the low sales figures that the owner used the brand sporadically in Estonia.

“Punishing” the potential lack of success of trademark owners in offering trademarked goods or services by depriving them of trademark rights cannot be considered justified.

The Board adds that in this case, the question of whether the owner’s trademark has become reputable or well-known as a result of its use in Estonia is not under consideration.

The Board also does not consider relevant the claim of the opponent that it is not clear whether goods have been ordered from the online store by different persons or by one or more persons acting as distributors.

In summary, the Board finds that the owner has proven the actual use of the trademark “target board image” in connection with class 35 “retail services”.

The application for revocation was partially sustained.

Harju County Court, Civil case No. 2-22-18669

CitySecurity OÜ’s lawsuit against Citysec Security OÜ to prohibit harmful activities

The applicant owns the rights of the trademark owner arising from the registered trademark CITYSECURITY in class 45.

The defendant was registered as a company and the defendant provides security services.

The parties dispute, among other things, whether the defendant should be prohibited from using the words “citysec security” and “citysecurity”, including the provision of security services under the label “citysec security”, and whether the defendant should be ordered to amend the articles of association of their company.

According to the Court, the applicant has substantiated and proven its claim against the defendant since the defendant has violated the rights of the applicant as a trademark owner.

The defendant uses a business name similar the applicant’s trademark and the designation “citysec security” for the provision of services in relation to which the trademark is protected. Third parties have repeatedly confused the applicant and the defendant.

The defendant does not have the applicant’s permission to use a sign likely to be confused to the applicant’s trademark. The defendant has not highlighted or proven the circumstances that exclude the violation of rights.

The Commercial Code stipulates that a verbal, letter or numerical sign protected as a trademark in Estonia, or a combination thereof may not be used in a business name without the notarized consent of the owner of the trademark, unless the entrepreneur operates in areas of activity for which the trademark is not protected. According to the Court, the defendant’s claim that since the registrar did not prevent the registration of the business name the applicant’s claim is not justified is erroneous.

The Court finds that the defendant must be prohibited from using the word pair “Citysec Security” and the word “CITYSECURITY” in its company name. The defendant must be ordered to amend its articles of association so that its company name does not include the designation “Citysec Security”. The defendant must be prohibited from providing security services using the “Citysec Security” mark.

The claim was sustained.

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
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