Newsletter No. 56

I Oppositions

Decision No. 2254-o

Application for a declaration of partial invalidity of the exclusive right to the trademark “Ristsõnastik”.

The applicant submitted a request to declare the exclusive right to the trademark “Ristsõnastik” invalid, relying on alleged prior copyright and bad faith. The applicant argued that they had created both the title of the work “Ristsõnastik” and its concept. However, the Board found that copyright protection does not extend to ideas or concepts, but only to their concrete expression.

At the same time, the Board established that the word “Ristsõnastik” as a title of a work is sufficiently original to be protected by copyright and is linked to specific works, rather than to an abstract idea. Based on the evidence, it was concluded that the applicant was the author of these works and initially held the rights to them but had transferred the economic rights under publishing agreements to the publisher. Since the economic rights had been assigned, the applicant no longer retained any rights on which to base the claim.

The Board also did not find bad faith in the registration of the trademark, concluding that the publisher acted within the scope of its economic rights.

The application was dismissed.

Decision No. 2306-o

Contested trademark

Application for a partial declaration of invalidity of the exclusive right to the trademark “SISEVETE FESTIVAL + device”.

The Board assessed the applicant’s request to declare the exclusive right to the trademark “SISEVETE FESTIVAL + device” invalid on the grounds of alleged bad faith. The Board emphasized that the burden of proving bad faith lies with the applicant, and the trademark owner is presumed to act in good faith until proven otherwise.

The evidence submitted by the applicant, relating to the organization and funding of the 2021 Sisevete Festival, did not demonstrate that the trademark name or logo had been created in violation of intellectual property rights or registered in bad faith. The Board found that the festival name had already been in use prior to the project, and that the creation of the logo and website did not establish the applicant’s ownership of the trademark rights or indicate bad faith.

It was also not established that the owner had any dishonest intent when registering the trademark, particularly considering their later role in organizing the festival.

The application was dismissed.

II APPEALS

Decision No. 2285-o

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

The Board reviewed the appeal against the decision of the Patent Office, which refused to register the trademark “Digiarhitekt” for certain services in Classes 35 and 42. The Patent Office justified the refusal on the grounds that the mark is descriptive and lacks distinctiveness, as it consists of the words “digi” and “arhitekt” (“architect” in Estonian), which refer to the design of digital solutions and IT systems.

The Board agreed that the mark is descriptive for most services in Class 42 and for part of the services in Class 35, as it is directly associated with the field of digitalization and IT architecture. However, it found that for certain services in Class 35 (such as financial auditing, marketing, and research services), the mark is not sufficiently directly descriptive and may be distinctive.

The Board emphasized that the assessment of descriptiveness is based on the perception of the average consumer and whether the trademark creates a direct association with the characteristics of the services.

Accordingly, it was concluded that the trademark is partially descriptive and non-distinctive, but not for all contested services. The Board upheld the appeal in part, annulled the Patent Office’s decision in the relevant part, and ordered the proceedings to continue with respect to those services for which the refusal was not justified.

The appeal was partially sustained.

Case No. 26-1a-383

Opposed domain names: vivat-bet.ee, vivatbetcasino.ee

The opponent argued that the opposed domain names are confusingly similar to its earlier trademarks “VIVATBET” and “VIVATBET CASINO”, and that they were registered without any right or legitimate interest and in bad faith. The Committee found that the opponent owns valid EU and international trademarks predating the domain names, and that their dominant and distinctive element “VIVATBET” is confusingly similar to the domain names. Minor differences, such as the use of a hyphen or the addition of the word “casino”, do not alter the overall impression or reduce similarity. It was also noted that “casino” is a descriptive element and lacks independent distinctiveness.

The Committee emphasized that the assessment of elements is based on the overall impression on the average consumer, and in this case the domain names may give the impression of being connected to the owner of the opponent’s trademarks. Since the registrant did not provide evidence of a legitimate interest, the Committee concluded that the domain names were registered without rights or legitimate interest and in bad faith.

The domain names were transferred to the opponent.

Case No. 26-1a-384 and 26-1a-385

Opposed domain names: ninja-casino.com.ee, ninjacasino.com.ee

The opponent’s earlier rights were EU trademarks “NINJACASINO” and “NINJA CASINO”, which predated the opposed domain names, and the Committee found that the domain names “ninja-casino” and “ninjacasino” are confusingly similar or identical to them.

The registrant did not provide evidence of a legitimate interest, and the Committee held that mere use of a domain name is not sufficient to establish such an interest. In addition, it was found that the domains were used in a manner that copied the opponent’s website and trademarks, indicating misleading and infringing activity rather than any legitimate interest.

Therefore, the Committee concluded that the domain names were registered without rights or legitimate interest.

The domain names were transferred to the opponent.

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