{"id":891,"date":"2020-12-10T11:33:00","date_gmt":"2020-12-10T11:33:00","guid":{"rendered":"https:\/\/turvaja-ee.vserver.zonevs.eu\/uncategorized\/uudiskiri-nr-34\/"},"modified":"2022-07-29T10:52:35","modified_gmt":"2022-07-29T10:52:35","slug":"newsletter-no-34","status":"publish","type":"post","link":"https:\/\/turvaja.ee\/en\/news\/newsletter-no-34\/","title":{"rendered":"Newsletter No. 34"},"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. 1860-o<\/strong><\/p>\n\n\n\n

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

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

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

Seven Old Barrels<\/strong><\/p>\n<\/div>\n<\/div>\n\n\n\n

Opposition to registration of the trademark \u201cSeven Old Barrels\u201d.<\/strong><\/em><\/p>\n\n\n\n

The Board notes that the applicant has not acknowledged receipt of the opposition.<\/p>\n\n\n\n

However, it is not reasonable to assume that at the end of the trademark registration procedure, the applicant\u2019s contact details will become irrelevant, i.e. the applicant will \u201cdisappear\u201d when their application is contested after two months. In essence, this would amount to a presumption of bad faith on the part of the applicant, which would not be acceptable.<\/p>\n\n\n\n

The Board emphasizes the importance of the applicant\u2019s experience a few years ago with a different opposition in which the applicant actively participated.<\/p>\n\n\n\n

The Board finds that the opponent\u2019s assertion that the registration of the contested mark \u201cSeven Old Barrels\u201d in Class 33 is confusingly similar to the applicant\u2019s earlier mark \u201cOld BARREL + device\u201d is not manifestly unjustified.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No. 1860-o<\/strong><\/p>\n\n\n\n

\n
\n

Earlier trademark and business name<\/p>\n\n\n\n

KIPSIVALU O\u00dc<\/strong><\/p>\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 \u201cKipsivalu ROXMAR + device\u201c.<\/strong><\/em><\/p>\n\n\n\n

The Board considers that the term \u201ckipsivalu\u201d (plaster casting) is inherently descriptive and non-distinctive in the context of construction services in Class 37. The fact that a word does not exist in dictionaries does not exclude the potential descriptive nature of said word. Trademark law does not provide special rights for persons who are the first to develop or introduce descriptive and indistinguishable marks.<\/p>\n\n\n\n

The Board considers that the advertising and sale of the goods and services covered by its trademark is a natural part of the economic activity of any undertaking, and does not necessarily demonstrate that the trademark is well-known.<\/p>\n\n\n\n

Although six Estonian legal entities have signed letters of confirmation stating, inter alia, that the mark \u201cKIPSIVALU\u201d is a distinctive mark of the opponent\u2019s services, it is not possible to draw conclusions about the wider perception of the relevant sectors in Estonia on the basis of merely six statements. In the Board\u2019s view, it is also clear that the individuals in question did not express their perceptions spontaneously, but that they were assisted in that regard.<\/p>\n\n\n\n

The Board notes that the Commercial Code does not impose the same conditions and restrictions on the choice of a business name as the Trade Mark Act does upon trademarks. Thus, the registration of a business name in the commercial register does not in itself guarantee that the mark in question is capable of functioning as a distinctive trademark for the goods or services of the undertaking concerned.<\/p>\n\n\n\n

The opponent is not entitled to restrict the use of the mark \u201ckipsivalu\u201d for third parties whose services are related to plaster casting.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No. 1852-o<\/strong><\/p>\n\n\n\n

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

PARK<\/strong><\/p>\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 \u201cPARK HOTELL VILJANDI + device\u201d<\/strong>.<\/em><\/p>\n\n\n\n

According to the Board, the applicant has presented convincing evidence from which it can be concluded that the word \u201cPARK\u201d is an element with a very low degree of distinctiveness in the context of hotel and accommodation services. The use of the word \u201cPARK\u201d in connection with accommodation services is common and customary in Estonia, and does not constitute a mark that can be associated only with the opponent.<\/p>\n\n\n\n

The element \u201cPARK\u201d may create an association for consumers of accommodation services that the correspondingly marked hotel or other accommodation establishment is located in or near a park, or that it has a view of a park, which in turn refers to the characteristics of the service and not so much to the service of one particular company. Nor does the Board consider irrelevant that the case-law of the Court of Justice of the European Union has already analysed the word element \u201cpark\u201d in the context of accommodation services and found it to be particularly suggestive or even descriptive (T-510\/14 and T-536\/14, paragraph 76).<\/p>\n\n\n\n

The most dominant and distinctive component of the applicant\u2019s combined mark is the representation of the building at the top of the mark, which is also the most visually prominent element in the applicant\u2019s mark. The opponent\u2019s mark does not contain such or a similar element. The trademarks \u201cPARK\u201d and \u201cPARK HOTELL VILJANDI + device\u201d are not similar in their entirety to such an extent that consumers could be misled.<\/p>\n\n\n\n

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

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

II Appeals<\/h3>\n\n\n\n

Decision No. 1846-o<\/strong><\/p>\n\n\n\n

Appeal against the partial refusal to register the trademark \u201cRAHAP\u00c4EVIK\u201d.<\/em><\/p>\n\n\n\n

The Board agrees with the Patent Office that the trademark \u201cRAHAP\u00c4EVIK\u201d (money diary) is inherently descriptive of the relevant goods and services, and inherently non-distinct.<\/p>\n\n\n\n

Nevertheless, the Board considers that the appellant\u2019s complaint is well-founded in its entirety. The unlawfulness of the decision of the Patent Office is evident in particular with regard to the fact that the examination proceedings omitted the web links submitted as evidence by the appellant, and with regard to the fact that the Patent Office did not properly analyse the claim of the mark being well-known.<\/p>\n\n\n\n

The Patent Office should not have simply ignored the web links presented as evidence in the examination proceedings, but the appellant should have been given an explicit opportunity to present all the evidence in a permanent secure form instead of the links. Even if the evidence provided does not meet the requirements clearly set out in the legislation, the principle of good administration should, as a general rule, inform the party concerned of the deficiency and give them a deadline to remedy said deficiency.<\/p>\n\n\n\n

In a situation where the appellant relies on the reputation of the mark in the business sector dealing with those goods or services, the Patent Office must assess, inter alia, whether the business sector concerned can be limited to members of the Banking Association, as asserted by the appellant, or if it should be considered more broadly.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No. 1834-o<\/strong><\/p>\n\n\n\n

Appeal against the partial refusal to register the trademark \u201cIT365\u2033.<\/em><\/p>\n\n\n\n

The Board considers that, in order for a service to be considered to fall within the field of information technology, the name of the service itself does not have to include a reference to information technology. It is sufficient if the services in question are traditionally provided in the field of information technology.<\/p>\n\n\n\n

The Board agrees with the Patent Office that the element \u201c365\u201d is generally associated with the meaning of the year by the average consumer and considers that, in particular in conjunction with the element \u201cIT\u201d, the mark gives the impression of referring to year-round IT services. Even if ensuring the day-to-day availability of IT services should not be widespread in practice, the fact that the mark \u201cIT365\u201d conveys the message that IT services are available 365 days a year remains unchanged. If, in practice, the appellant\u2019s services are not available 365 days a year, the potential misleading nature of the sign could come into question instead.<\/p>\n\n\n\n

Whether a trade mark is one-of-a-kind, unique or original, it must nevertheless be distinctive. Regarding the appellant\u2019s mark, the Board considers that those conditions have not been met.<\/p>\n\n\n\n

The appeal was rejected<\/strong>.<\/p>\n\n\n\n

\n\n\n\n

Decision No. 1817-\u043e<\/strong><\/p>\n\n\n\n

Appeal against the partial refusal to register the trademark \u201cCARAVAN\u201d.<\/em><\/p>\n\n\n\n

The Board found that, although the Patent Office correctly acknowledged that the word \u201ckaravan\u201d\/\u201ccaravan\u201d could be used in the meaning of \u201ccamping caravan\u201d in Estonian, on the basis of the evidence gathered during the trade mark examination procedure it has not been sufficiently considered why, in the context of use, the appellant\u2019s trademark cannot be granted legal protection in respect of the refused Class 39 services.<\/p>\n\n\n\n

In the absence of a well-established market for travel services for caravan-type vehicles, consumers are unlikely to have any particular expectation with regard to the mark \u201cCARAVAN\u201d that the travel services provided under that mark will be linked to travel services for caravan-type vehicles.<\/p>\n\n\n\n

According to the Board, the service of organising visas, passports or other travel documents does not have the characteristics of travel management services specifically for caravan-type vehicles. Consumers therefore have no expectation that, in the context of the service of organising visas, passports or other travel documents, the sign \u201cCARAVAN\u201d will be used to designate the service of organising documents specifically for caravan travel.<\/p>\n\n\n\n

The Patent Office has not sufficiently substantiated the decision to refuse registration. In order to refuse in circumstances excluding legal protection, the Patent Office must have more weighty reasons and evidence than merely those arising from the fact that consumers can organise caravan trips themselves.<\/p>\n\n\n\n

The appeal was sustained.<\/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. 20-1a-336<\/strong><\/p>\n\n\n\n

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

The Board found that the transfer of the domain name tervisekassa.ee<\/em> to the opponent was not justified.<\/strong><\/p>\n\n\n\n

It emerges from the dispute that the Estonian Health Insurance Fund (Eesti Haigekassa) acquired a shareholding of Tervisekassa O\u00dc through a related party in order to secure the name change of \u201cEesti Haigekassa\u201d to \u201cEesti Tervisekassa\u201d.<\/p>\n\n\n\n

The opponent found that \u201cTervisekassa\u201d is a translation of the name of Eesti Haigekassa in English (Estonian Health Insurance Fund), but in the Board\u2019s opinion such an approach is incorrect. As this is the official name of the authority in English, it is not reasonable to assume that it will be translated back into Estonian any other way than using the official Estonian name of the authority, \u201cEesti Haigekassa\u201c. In addition, even the direct translation would be different from the suggested \u201cTervisekassa\u201d.<\/p>\n\n\n\n

The Board considers that the discussions in 1991 before the Riigikogu (Parliament) regarding the possibility of choosing \u201cTervisekassa\u201d as the name of the Estonian Health Insurance Fund did not matter when registering the Domain Name in 2013, nor now, at the time of the decision.<\/p>\n\n\n\n

The Board considers that the opponent\u2019s conduct may instead indicate an attempt of reverse domain name hijacking.<\/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 34th 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-891","post","type-post","status-publish","format-standard","hentry","category-news"],"acf":[],"_links":{"self":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/891","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=891"}],"version-history":[{"count":2,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/891\/revisions"}],"predecessor-version":[{"id":1337,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/891\/revisions\/1337"}],"wp:attachment":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/media?parent=891"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/categories?post=891"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}