\u201d.<\/em><\/p>\n\n\n\nBoth the earlier trademark and the opposed trademark are word marks. The earlier trademark consists of one distinctive element \u201cLORUP\u201d, 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 \u201cloru\u201d (goof). The opposed trademark consists of the elements \u201cLorupi kvartal\u201d, the first element of which is the possessive form of the same word or name \u201cLorup\u201d. The second element of the contested mark, \u201ckvartal\u201d (quarter), has very low distinctiveness, at least in relation to real estate services. Only the more distinctive element \u201cLorupi\u201d, in which the earlier trademark appears in its entirety, can be considered visually dominant.<\/p>\n\n\n\n
Also phonetically, the earlier trademark is included in its entirety in the opposed trademark.<\/p>\n\n\n\n
Therefore, the most dominant and distinctive elements of the two trademarks are identical.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
The opposition was sustained.<\/strong><\/p>\n\n\n\n
\n\n\n\nII Cancellations<\/strong><\/strong><\/h3>\n\n\n\nDecision No. 1998-o<\/strong><\/p>\n\n\n\n\n
\n
Contested trademark<\/p>\n\n\n\n![\"\"](\"https:\/\/turvaja.ee\/wp-content\/uploads\/2023\/12\/image.png\")
<\/figure>\n<\/div>\n<\/div>\n\n\n\nApplication for the revocation of the rights of the owner of the \u201ctarget board image\u201d<\/strong> figurative mark.<\/em><\/p>\n\n\n\nThe 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.<\/p>\n\n\n\n
The dispute between the parties lies in whether the trademark has been used in connection with the class 35 \u201cretail services\u201d. 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.<\/p>\n\n\n\n
In the Board\u2019s opinion, the evidence presented by the owner of the trademark proves the actual use of the \u201ctarget board image\u201d trademark in Estonia in connection with retail services.<\/p>\n\n\n\n
As can be seen from the owner\u2019s 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.<\/p>\n\n\n\n
The Board notes that the use of a trademark does not have to be quantitatively vast to be considered actual use; the de minimis<\/em> rule has not been established.<\/p>\n\n\n\nThe 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.<\/p>\n\n\n\n
\u201cPunishing\u201d the potential lack of success of trademark owners in offering trademarked goods or services by depriving them of trademark rights cannot be considered justified.<\/p>\n\n\n\n
The Board adds that in this case, the question of whether the owner\u2019s trademark has become reputable or well-known as a result of its use in Estonia is not under consideration.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
In summary, the Board finds that the owner has proven the actual use of the trademark \u201ctarget board image\u201d in connection with class 35 \u201cretail services\u201d.<\/p>\n\n\n\n
The application for revocation was partially sustained.<\/strong><\/p>\n\n<\/div><\/div>\n\n\n