Newsletter No. 50

I Oppositions

Decision No. 2028-o

Earlier trademark

Opposed trademark

POSTIMAJA

Opposition to registration of the trademark “POSTIMAJA“.

Assessing the likelihood of confusion, including association, of the comparable trademarks, the Board finds that the services designated by these marks are partly identical and partly similar. The marks are visually and phonetically similar to a limited extent, as they contain the identical verbal element “posti” (post in Estonian). At the same time, the opposed trademark “POSTIMAJA” has an additional part to that element, which is visually and phonetically distinct and reduces the visual and phonetic similarity between the trademarks. The contested trademark has a clear and specific meaning for the relevant public, which the public immediately understands, as it specifically refers to a post office or a building used for that purpose in Tallinn, which is managed by the applicant. The Board therefore finds that in the present case the visual and phonetic similarities of the trademarks have been neutralised. Since the trademarks are therefore not similar, there is also no likelihood of confusion, including association.

The Board accepts that the earlier international trademark valid in the EU is well-known in the EU, insofar as it is well-known in Finland, which is a Member State and an essential part of the EU, and where the reputation of the trademark has developed as a result of a long-standing state monopoly. However, the Board does not consider it plausible that the Estonian public would associate the contested trademark with the opponent or with services identical or similar to the contested trademark provided under its trademark, since Estonian consumers have had minimal, if any, exposure to those services of the opponent. It is also not likely that the use of the opposed trademark in Estonia would detract from the distinctive character of the earlier trademark, which is inherently low, even if it has acquired a reputation in Finland.

The opposition was dismissed.

Decision No. 2244-o

Earlier trademark

S7

Opposed trademark

Opposition to registration of the trademark “S 07 + device”.

Considering the majority of the goods covered by the comparable marks being identical and to a limited extent similar, as well as the similarity of the marks, including in particular their high conceptual similarity, it is likely that consumers, relying on an imperfect memory of the opponent’s earlier trademark, may confuse the contested trademark with the opponent’s mark, consider it to be the opponent’s trademark or associate it with the opponent.

The visual perception of trademarks is also influenced by their meaning; the number 0 in front of another number does not mean anything mathematically in the commonly used decimal system, therefore, even when visually comparing the trademarks, it indicates a lack of independent value.

Further, the Board considers that the applicant has not submitted any positions or evidence refuting or questioning the opponent’s reasoning and evidence, even though the existence of such an opportunity has been explained to them and they have been given a deadline for submitting a position. Among other things, it can be assumed that the applicant does not wish to oppose the opposition.

The opposition was sustained.

Decision No. 2196-o

Earlier trademark

Opposed trademark

Opposition to registration of the trademark “NIVIA + device”.

The Board considers that the central and conspicuous, and therefore visually dominant, element of both trademarks is their word element. Although both trademarks have design elements that are clearly different, the word elements “NIVEA” and “NIVIA” are so similar that the presence of the design elements does not alter the visual similarity of the dominant word elements. The only difference in the words is one letter, which is in the middle of the word, and therefore in a less conspicuous position. In this respect, both word elements are highly distinctive artificial words in themselves, while the distinctive significance of the circular background of the opposing mark and, to an average extent, the diamond-shaped design element of the contested mark is lower. The elongation of the word element of the contested mark is not a significant factor affecting distinctiveness; in other respects, the design of the dominant words is very similar. Although the colour approximation of the marks is different, both are contrasting marks in which the dominant word is clearly visible and emphasized. In view of all the above, the Board considers the trademarks as a whole to be at least moderately similar.

Although these are short and immediately recognizable words, the words are so phonetically similar, and the difference is so insignificant that it is not a factor that significantly affects the difference in pronunciation of the trademarks.

Considering that the opponent’s mark is earlier, the comparable goods are identical, and the comparable marks are more than average in similarity, it is likely that the average consumer will make a connection between the opponent’s mark and the applicant’s mark, confusing the trademarks, or will associate the applicant with the opponent, considering them to be economically related.

The Board notes that the coexistence of the comparable marks in India is not relevant, since the historical circumstances are different in India. The history of the development of the opposed mark is also not a factor that would reduce the likelihood of similarity and confusion between the comparable trademarks on the Estonian market.

The opposition was sustained.

II Appeals

Decision No. 2107-o

Appeal against the decision of the Patent Office to reject a patent application.

The applicant has requested the annulment of the contested decision. The Board finds that the applicant has submitted a substantive, logically structured and legally-based objection to the Patent Office’s preliminary ruling, which is difficult to understand and at times illogical and general, without substantive grounds. The Board also points out that the preliminary ruling is contradictory: while in its operative part the applicant is given a deadline to submit a written or oral objection, the annex refers to the invitation to the oral proceedings, whereby the expert has stated that since the applicant does not wish to have an oral procedure, the expert will inform the applicant of the decision to reject the application. Failure to appear at the oral proceedings is a circumstance that was caused by the parties’ interpretations and miscommunication, and in which the expert’s conviction that the applicant did not intend to participate in the planned oral proceedings is not of minor importance.

In the contested decision, the Patent Office has not provided a substantive response to the applicant’s written objection, which is why it is not clear whether and why the Patent Office has not agreed with the written objection. Based on the above, there is already a formal basis to consider the contested decision to be inconsistent with on a legal basis and to be annulled.

The applied-for patent concerns a device, in which case it is appropriate to provide an example of the device’s implementation. The Board finds that the references to the drawings in the description of the invention of the relevant application are correct and understandable, although the numbering is not continuously increasing. The Board points out that if there are deficiencies in the description of the invention, it may be replaced by the description of the initial application. In this context, the expert’s position that the use of the numbering used in the initial application is not permissible because the newly submitted application is a new document is incomprehensible. The deficiencies are not substantive and do not prevent understanding of the industrial use of the device that is the invention.

Even though the procedure for granting legal protection to an industrial property object is not an administrative procedure, the Patent Office has a proportionate obligation to provide clarification and to cooperate with the applicant. Both in the case where the applicant has a patent attorney and in the absence of such an attorney, the inquiries and decisions of the Office must be understandable to the applicant. The Board does not consider it reasonable to have a situation where the logic of the Patent Office’s decision is not understandable, while the technical content of the application document, which is unclear in the opinion of the Patent Office, is understandable even to a lawyer. The Board categorically disagrees with the Patent Office’s position that it is not possible to explain the meaning of the provisions of the legislation during the submission of inquiries and that it is the responsibility of the applicant or the patent attorney representing them should be active in obtaining explanations.

The Board finds that the requirements submitted in the inquiries, which later turned out to be the grounds for rejecting the application, were not sufficiently clear and their meaning was left open to the applicant. Thus, the Patent Office had not made it clear to the applicant in the procedure preceding the contested decision which shortcomings could lead to the rejection of the application.

In this case, the Board considers it justified to replace the current expert with another expert competent in the field who will examine the circumstances of the application impartially and objectively, and whose decision can be considered authoritative by the applicant.

The appeal was sustained, and the Patent Office was ordered to continue the proceedings considering the circumstances set out in the Board’s decision, including to reinstate the patent application proceedings and immediately publish the patent application.

Case No. 24-1a-373

Opposed domain name: e-residentsus.ee

The opponent owns the European Union trademark “e-Residency”. In the Committee’s opinion, the domain name is misleadingly similar to the opponent’s trademark, as the domain name consists of a clearly understandable translation of the trademark. In the Committee’s opinion, there is no evidence that would confirm the registrant’s right or legitimate interest in the contested domain name. The case materials do not show that the registrant offers an e-residency program or services. The registrant’s claim that its services are aimed at e-residents is also unsubstantiated and contradicts what was published on the website associated with the domain name.

The fact that the opponent had not previously registered its trademark as a domain name and had not previously taken action against the registration of the domain name does not give the registrant a right or legitimate interest in the contested domain name. The Committee finds that the contested domain name by its nature poses a high risk that it may be indirectly associated with the opponent or with the official Estonian e-residency program.

The opposition was sustained.

Tallinn District Court

Civil Case No. 2-23-15800

Appeal against the decision on the action for declaration of termination of exclusive trademark rights.

The County Court had dismissed the action. According to the grounds of the decision, the applicant is misleadingly trying to claim that there is a clear formula for measuring the actual use of the trademark. In the court’s opinion, such a legal situation does not exist in reality. The County Court was of the opinion that the economic power of the defendant group does not make the use of the disputed trademark insufficient, considering the factual circumstances of its use.

The applicant requested that the County Court’s decision be annulled, and a new decision be made in the case, granting the claim, or alternatively, that the case be referred to the County Court for a new hearing. According to the grounds of the appeal, the County Court failed to establish whether the trademark owner has used the trademark in question to designate retail services in Estonia for five consecutive years and whether the registered trademark has been used in the form in which it was registered.

Unlike the applicant’s position, the County Court, in the opinion of the District Court, has assessed the evidence presented in accordance with the law and the District Court has no basis to give a different assessment of the evidence presented or to take a different position on the established facts than the County Court.

In the opinion of the District Court, the evidence submitted by the defendant is sufficient to establish the defendant’s actual use of the trademark in Estonia during the relevant period. For the requirement of actual use of the trademark to be met, the trademark must have been used at some point during the relevant 5-year period. Therefore, it is sufficient if use is proven during a period that falls within those 5 years. The trademark does not have to have been used continuously throughout that period.

The established circumstances show that the online store where the trademark was used was aimed, among others, at Estonian customers, they were able to order goods from there and they indeed actually ordered goods from there. The fact that the volume of orders was not very large is not in itself important, since no minimum volume requirement has been established. The fact that the defendant has not set itself the goal of acquiring a large market share in Estonia, has not opened physical stores or has not separately advertised its online store and/or the goods offered specifically for Estonian customers does not, in the opinion of the District Court, make the defendant’s use of the trademark illusory.

The appeal was dismissed.

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