Newsletter No. 57

I Oppositions

Decision No. 2188D-o

Contested design variants:

Application for the termination of the rights of the owner of an industrial design.

The dispute concerned the registered industrial design of a “reflector fastening strap.” The Board clarified that, in the case of a registration comprising multiple variants, the variants should generally be assessed separately, based on the reproduction of each variant recorded in the register. The Board also found that a subsequent division of the registration does not retroactively affect a dispute that has already commenced.

The applicant demonstrated that the registration hindered its economic activities, but this alone was insufficient to justify termination of the owner’s rights. The Board found that the design of the fastening straps did not arise solely from the product’s technical function, as the designer had sufficient freedom to choose the design of the strap, D-ring, rivet, and other details. Accordingly, there were no grounds for terminating protection of the design based on its technical function.

With regard to distinctive character, the Board found that the foreign designs cited by the applicant had not been disclosed in such a manner that the relevant sector in Estonia could reasonably have been expected to become aware of them in the normal course of business. In addition, the Board found that, even if the earlier designs were considered to have been properly disclosed, they produced a different overall impression from the contested variants.

The contested designs contained several design elements that were absent from the earlier designs, or whose proportions and arrangement differed. Accordingly, none of the contested variants was sufficiently similar to the earlier designs to be considered indistinguishable.

The application was dismissed.

Decision No. 2302D-o

Reproductions of the contested design:

Application for a declaration of invalidity of the rights of the owner of an industrial design.

The applicant argued that the contested design did not meet the requirements of novelty and distinctive character and that it hindered its economic and business activities. The Board found that a maintenance hatch that was confusingly similar to the contested design had been made available to the public well before the contested design was registered. There was no basis for assuming confidentiality regarding the disclosed material, and it could therefore be considered when assessing the novelty of the contested design.

Although the previously disclosed maintenance hatch differed from the contested design in certain details, such as the hooks and locking system, the Board found that these differences were insignificant and did not alter the overall impression of the products. The Board therefore considered the previously disclosed maintenance hatch to be confusingly similar to the contested design.

For the assessment of novelty, it was irrelevant who had originally created or disclosed the design or what relationships or agreements existed between the parties. Since the contested design was not new, there were no grounds for maintaining its legal protection. It was therefore unnecessary to assess its distinctive character separately.

The application was granted, and the rights of the owner of the contested industrial design were terminated on the grounds of lack of novelty.

II APPEALS

Decision No. 2330-o

Appeal against the refusal to grant legal protection to the trademark “MicroClean”.

The Estonian Patent Office had refused to grant legal protection to the trademark “MicroClean” on the grounds that the mark was descriptive and devoid of distinctive character. The Board agreed that consumers understood the meanings of the words “micro” and “clean”, but found that this alone was insufficient to render the mark descriptive. Consumers did not directly and immediately associate the sign “MicroClean” with the removal of micro-dust or micro-cleaning.

The reasoning of the Estonian Patent Office required several successive inferences to be made, wherefore the meaning of the sign was not immediately apparent to consumers. In the Board’s view, the mark had an indirect connection with the goods but was suggestive rather than descriptive.

The evidence submitted did not demonstrate that consumers or other businesses used the mark “MicroClean” to describe the relevant goods. Nor could any conclusion regarding the registrability of the trademark be drawn from differing decisions in other countries. Since the Board found that the applicant’s trademark was not descriptive in relation to the goods applied for, the trademark could not, for the same reasons, be regarded as devoid of distinctive character.

The appeal was sustained.

Case No. 26-1a-390

Opposed domain name: kingspan.ee

The Committee found that the opponent had an earlier right to the domain name, arising from a trademark valid in Estonia. The domain name was identical to that trademark, as it contained the trademark in its entirety. The registrant did not provide evidence that it had an independent right or legitimate interest in using the domain name.

The prior use of the domain name to direct consumers to a website offering competing products did not demonstrate a legitimate interest, but could instead have harmed the opponent’s rights. Nor was the registrant’s intention to cooperate with the opponent in the future sufficient to establish a legitimate interest, as such cooperation had not actually materialised. The registrant also failed to demonstrate that it was commonly known by the domain name or that it had used the domain name for a legitimate non-commercial purpose.

The domain name was transferred to the opponent.

Case No. 26-1a-388

Opposed domain name: puffid.ee

The Committee found that the opponent had an earlier right to the domain name arising from its trade name, and that the domain name contained its main distinctive element, “Puffid”.

The registrant failed to demonstrate that it had an independent right or legitimate interest in the domain name, as the domain had been used throughout the entire period for the benefit of the opponent’s business activities. The registrant’s status as a shareholder also did not give it a personal right to the domain name used by the company.

The Committee also found that the registrant had used the domain name in bad faith by demanding payment from the opponent for its use and threatening to shut down the website and email services.

The registrant’s claims concerning the transfer of the domain name, a prior agreement, and its involvement in creating the brand remained unsubstantiated. The Committee therefore found that both the absence of legitimate interest and bad faith requirements were satisfied.

The domain name was transferred to the opponent.

Case No. 26-1a-391

Opposed domain name: kodukolle24.ee

The opponent was a company that had been operating in Estonia for a long time in the sale and installation of heating equipment and accessories, with “kodukolle” (“home hearth” in Estonian) being the central and distinctive element of its trade name. The Committee found that the domain name was confusingly similar to the opponent’s trade name, as “kodukolle” formed the dominant element of both marks, while the number “24” did not materially alter the overall impression.

The registrant justified its choice of the domain name by stating that it had a uniform business model across the Baltic States, using corresponding local terms together with the number “24” in Lithuania and Latvia. The Committee nevertheless found that the domain names used in Lithuania and Latvia were not essentially structured in the same way, as the words used there referred to “home/to home”, whereas the term “kodukolle” chosen in Estonia referred both to a home and a heating hearth and coincided with the opponent’s trade name. The Committee therefore did not consider the domain names used in the other Baltic States sufficient justification for choosing specifically the element “kodukolle” in Estonia and found that this supported the conclusion that the domain name had been used in bad faith.

The likelihood of confusion was further increased by the fact that the opponent and the registrant operated in the same field and offered largely the same or similar heating equipment and accessories. Through its online store operating in the same field, the registrant could therefore create a false impression among consumers of a business connection between the opponent and the registrant.

The domain name was transferred to the opponent.

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