{"id":882,"date":"2021-09-10T12:12:00","date_gmt":"2021-09-10T12:12:00","guid":{"rendered":"https:\/\/turvaja-ee.vserver.zonevs.eu\/uncategorized\/uudiskiri-nr-37\/"},"modified":"2022-07-29T11:12:35","modified_gmt":"2022-07-29T11:12:35","slug":"newsletter-no-37","status":"publish","type":"post","link":"https:\/\/turvaja.ee\/en\/news\/newsletter-no-37\/","title":{"rendered":"Newsletter No. 37"},"content":{"rendered":"\n

Decisions of the Estonian Industrial Property Board of Appeal<\/h2>\n\n\n
<\/g><\/svg><\/div>\n\n

I Oppositions<\/h3>\n\n\n\n

Decision No. 1929-o<\/strong><\/p>\n\n\n\n

\n
\n

Earlier trademarks<\/p>\n\n\n\n

FACEBOOK<\/strong><\/p>\n\n\n\n

\"\"<\/figure>\n\n\n\n
\"\"<\/figure>\n<\/div>\n\n\n\n
\n

Opposed trademark<\/p>\n\n\n\n

\"\"<\/figure>\n<\/div>\n<\/div>\n\n\n\n

Opposition to registration of the trademark \u201eDEFYING THE TIME ATHLETICS FOR MASTER ATHLETES FACEBOOK TIPS TRICKS CAMPS CHAMPS + device\u201c.<\/strong><\/em><\/p>\n\n\n\n

The Board considers that it has been established that the opponent is an indisputably well-known undertaking which owns a distinctive and well-known mark in various designs, which has also been repeatedly registered as earlier marks. Although the element \u201cFACEBOOK\u201d is used within the contested mark as part of the word element, this does not preclude similarity between the opposed marks, since the earlier mark is used in identical form and the rest of the word mark is predominantly descriptive of services.<\/p>\n\n\n\n

Given the similarity of the marks and the services, as well as the attention of the average consumer, it can be concluded that the consumer, seeing the contested mark with the word element \u201cFACEBOOK\u201d in it, may believe that the services offered come from the opponent. It is also likely that the use of a well-known mark within the contested mark may lead to abuse of the distinctive character of that mark and \/ or damage its distinctive character and reputation.<\/p>\n\n\n\n

In view of the applicant\u2019s removal from the commercial register, the contested application has become an \u201corphan property\u201d for which no one is responsible and, as there is a reasonable risk of infringing the opponent\u2019s exclusive right, the refusal to register the contested mark must be considered well founded.<\/p>\n\n\n\n

The opposition was sustained.<\/strong><\/p>\n\n\n\n

\n\n\n\n

Decision No. 1975-o<\/strong><\/p>\n\n\n\n

\n
\n

Earlier trademarks<\/p>\n\n\n\n

KV24<\/strong><\/p>\n\n\n\n

\"\"<\/figure>\n<\/div>\n\n\n\n
\n

Opposed trademark<\/p>\n\n\n\n

\"\"<\/figure>\n<\/div>\n<\/div>\n\n\n\n

Opposition to registration of the trademark \u201e<\/strong><\/em> ekv24.ee + device<\/em><\/strong>\u201c.<\/em><\/strong><\/p>\n\n\n\n

The Board finds that the opponent has sufficiently substantiated the similarities between the applicant\u2019s trademark \u201cekv24.ee + device\u201d and the opponent\u2019s trademarks \u201cKV24\u201d and \u201cKINNISVARA 24 + device\u201d. The Board agrees with the opponent that the element \u201c.ee\u201d in the applicant\u2019s trademark is an extension referring to the Estonian top-level domain, for the use of which the applicant does not have the exclusive right.<\/p>\n\n\n\n

The Board also agrees with the opponent that the applicant\u2019s mark is similar to the opponent\u2019s earlier mark \u201cKINNISVARA 24 + device\u201d, in particular as a result of the use of the applicant\u2019s figurative element and, to a certain extent, the number 24.<\/p>\n\n\n\n

The Board further agrees with the opponent that the services in Classes 35 and 36 covered by the applicant\u2019s mark are identical to those covered by the opponent\u2019s earlier marks.<\/p>\n\n\n\n

Taking into account the similarity of the applicant\u2019s trademark \u201cekv24.ee + device\u201d with the opponent\u2019s trademarks \u201cKV24\u201d and \u201cKINNISVARA 24 + device\u201d and the identity and similarity of the relevant services, the Board considers that there is a likelihood of confusion by the consumer.<\/p>\n\n\n\n

The opposition was sustained.<\/strong><\/p>\n\n\n\n

\n\n\n\n

Decision No. 1993-o<\/strong><\/p>\n\n\n\n

\n
\n

Earlier trademark<\/p>\n\n\n\n

MOLO<\/strong><\/p>\n<\/div>\n\n\n\n

\n

Opposed trademark<\/p>\n\n\n\n

MOLO<\/strong><\/p>\n<\/div>\n<\/div>\n\n\n\n

Opposition to the grant of legal protection for the trademark \u201c<\/strong><\/em>MOLO<\/em><\/strong>\u201c (<\/em><\/strong>accelerated procedure).<\/strong><\/em><\/p>\n\n\n\n

The opponent considered that the applicant\u2019s mark \u201cMOLO\u201d is identical to the opponent\u2019s earlier mark \u201cMOLO\u201d, which has been protected in relation to partly identical and partly similar goods and presents a likelihood of confusion by the consumer, including association with the earlier mark.<\/p>\n\n\n\n

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not nominated their representative, thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.<\/p>\n\n\n\n

The opposition was sustained.<\/strong><\/p>\n\n<\/div><\/div>\n\n

<\/g><\/svg><\/div>\n\n

II Cancellations<\/h3>\n\n\n\n

Decision No. 1836-o<\/strong><\/p>\n\n\n\n

\n

Opposed trademark<\/p>\n\n\n\n

MOLO<\/strong><\/p>\n<\/div>\n\n\n\n

Application for the invalidation<\/em> of the exclusive right of the proprietor of the trademark \u201cJ\u00d5ULUGALA\u201d.<\/strong><\/em><\/p>\n\n\n\n

The Board considers that the mark \u201cJ\u00d5ULUGALA\u201c (Christmas gala<\/em> in English) is not inherently distinctive in relation to the services in Class 41 covered by the registration.<\/p>\n\n\n\n

The Board agrees that the mark \u201cJ\u00d5ULUGALA\u201c does not fulfil the main function of a trademark, which is to guarantee to end consumers a certain origin of the goods and services covered by said mark. The main consideration in the present case is therefore whether the evidence adduced before the Board is sufficient to establish that the mark \u201cJ\u00d5ULUGALA\u201c has acquired distinctive character through use.<\/p>\n\n\n\n

According to the evidence, the mark used by the proprietor has not simply been \u201cJ\u00d5ULUGALA\u201c, but the combined mark \u201cJ\u00d5ULUGALA + device\u201c with some variations in design aspects over the years. The Board does not rule out the possibility that the proprietor\u2019s figurative mark \u201cJ\u00d5ULUGALA + device\u201c may be distinctive, but that does not justify the proprietor\u2019s exclusive right to the mark \u201cJ\u00d5ULUGALA\u201c.<\/p>\n\n\n\n

The materials provided by the proprietor constitute normal activities related to the organization and conduct of events. In the Board\u2019s view, that evidence does not, taken as a whole, support the conclusion that there has been a change in the perception of the mark \u201cJ\u00d5ULUGALA\u201c as a trademark of a particular person among consumers of entertainment events or other individuals. The Board notes that other persons in Estonia also use the sign \u201cJ\u00d5ULUGALA\u201c in the names of their events.<\/p>\n\n\n\n

The Board confirms that the descriptive use of the mark \u201cJ\u00d5ULUGALA\u201c is also evidenced by the fact that the proprietor has marketed their events to other language audiences by translating the mark into the respective languages \u200b\u200b\u2013 \u201cCHRISTMAS Gala\u201d, \u201cJOULU Gaala\u201c (in Finnish),  \u201e\u0420\u041e\u0416\u0414\u0415\u0421\u0422\u0412\u0415\u041d\u0421\u041a\u0418\u0419 \u0433\u0430\u043b\u0430-\u043f\u0440\u0430\u0437\u0434\u043d\u0438\u043a \u201c (in Russian) . Although translation of the mark is not prohibited, the Board considers that, in the present case, it points to the proprietor themselves perceiving the mark \u201cJ\u00d5ULUGALA\u201c as referring to the type of services.<\/p>\n\n\n\n

The trademark was declared invalid.<\/strong><\/p>\n\n<\/div><\/div>\n\n

<\/g><\/svg><\/div>\n\n

Decisions of the Domain Disputes Committee<\/h3>\n\n\n\n

Case No. 21-1a-351<\/strong><\/p>\n\n\n\n

Opposed domain name: <\/em>postiindeks.ee<\/em><\/p>\n\n\n\n

As described on the registrant\u2019s website, the registrant uses the domain name to provide a zip code lookup service.<\/p>\n\n\n\n

The opponent (AS Eesti Post, Estonian Post<\/em> in English) states that it holds the license required for the provision of the universal postal service. According to the opponent, the word \u201cpostiindeks\u201d (postal code<\/em> in English) has a well-established link with the postal service. The opponent considers that the domain name is identical to its earlier right and has been registered in bad faith.<\/p>\n\n\n\n

According to the Committee, the opponent has not established the existence of an earlier right. The management and use of postal codes is not an earlier right within the meaning of the regulations. As the opponent has no prior right, the Committee will not further examine the grounds for upholding the opposition.<\/p>\n\n\n\n

However, the Committee adds, as a side note, that postal codes are not something which belongs to the opponent. According to the Postal Act, the activity license of a universal postal service provider is granted by public tender for five years. Thus, the management of postal codes by the opponent is of a temporary nature and cannot show that the postal codes belong to the opponent.<\/p>\n\n\n\n

In addition, since the registrant\u2019s website has a credible link to the domain name, their actions could not be considered to be in bad faith. Selling advertisements and online marketing are not malicious activities and do not damage the opponent\u2019s reputation.<\/p>\n\n\n\n

The opposition was rejected.<\/strong><\/p>\n\n<\/div><\/div>\n\n

<\/g><\/svg><\/div>\n\n

The material provided in this newsletter is for informational purpose only and does not contain legal advice.
For additional information please contact our patent agency:<\/strong><\/p>\n\n\n\n

Patendib\u00fcroo TURVAJA O\u00dc
Liivalaia 22
Tallinn 10118
Estonia<\/strong><\/p>\n\n\n\n

turvaja@turvaja.ee<\/a>
Phone: +372 6 403 109<\/a><\/strong><\/p>\n\n<\/div><\/div>","protected":false},"excerpt":{"rendered":"

We invite you to have a look at the 37th issue of Turvaja newsletter.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"inline_featured_image":false,"footnotes":""},"categories":[2],"class_list":["post-882","post","type-post","status-publish","format-standard","hentry","category-news"],"acf":[],"_links":{"self":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/882","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/comments?post=882"}],"version-history":[{"count":3,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/882\/revisions"}],"predecessor-version":[{"id":1349,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/882\/revisions\/1349"}],"wp:attachment":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/media?parent=882"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/categories?post=882"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}