{"id":926,"date":"2019-06-10T13:30:00","date_gmt":"2019-06-10T13:30:00","guid":{"rendered":"https:\/\/turvaja-ee.vserver.zonevs.eu\/uncategorized\/uudiskiri-nr-29\/"},"modified":"2022-08-01T10:11:41","modified_gmt":"2022-08-01T10:11:41","slug":"newsletter-no-29","status":"publish","type":"post","link":"https:\/\/turvaja.ee\/en\/news\/newsletter-no-29\/","title":{"rendered":"Newsletter No. 29"},"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. 1618-o<\/strong><\/p>\n\n\n\n

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

\"\"<\/figure>\n<\/div>\n\n\n\n
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Opposed trademark<\/p>\n\n\n\n

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

The Board agreed with the applicant that the phrase VENE JUUST (\u201cRussian cheese\u201d in English) is a descriptive sign showing the kind of the cheese, that cannot be monopolized and registered in the name of one person. Phonetically, semantically and conceptually speaking, the Board found that it is unlikely that the compared signs are confused, including associating the applicant\u2019s sign with earlier signs.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No.<\/strong> 1616-o<\/strong><\/p>\n\n\n\n

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

\"\"<\/figure>\n\n\n\n
\"\"<\/figure>\n\n\n\n
\"\"<\/figure>\n<\/div>\n\n\n\n
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Opposed trademark<\/p>\n\n\n\n

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

The Board found that visually and conceptually, the overall impression of the compared trademarks is confusingly similar because they both consist of images of clouds\/spots that are depicted the same way. Despite the fact that the opposed sign also includes the verbal element \u201cestover\u201d, it remains more on the background of the red clouds and thus it cannot be seen as the dominant element in the respective sign. The Board agreed with the opponent that when evaluating phonetic difference, account must be taken of the specifics of certain goods, namely that in this case the consumers will mostly choose them from store shelves and will not make their buying decision based on hearing.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No.<\/strong> 1752-o<\/strong><\/p>\n\n\n\n

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

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

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

LE COCO<\/strong><\/p>\n<\/div>\n<\/div>\n\n\n\n

In the view of the Board, it is likely that he opponent\u2019s trademarks are known to the majority of the consumers, which do not require additional proof from the opponent, and which makes the opponent\u2019s trademarks highly distinctive signs. The Board found that the registration of the sign LE COCO in the applicant\u2019s name for both dissimilar as well as similar and identical goods-services, might damage the distinctiveness and reputation of the earlier reputable sign.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No.<\/strong> 1717-o<\/strong><\/p>\n\n\n\n

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

BEAUTY BAY<\/strong><\/p>\n<\/div>\n\n\n\n

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

BEAUTY BAY JUUKSESTUUDIO<\/strong><\/p>\n<\/div>\n<\/div>\n\n\n\n

One of the main arguments of the applicant was that the goods-services protected by the opponent\u2019s trademark in classes 3 and 35, and services marked by the applied trademark in class 44, are different. The Board noted that the goods and services in all three classes are used by people on a daily basis for personal hygiene and for taking care of one\u2019 s appearance (esthetics). The comparable goods-services support and complement each other, their target group overlaps, and they belong to the same field of business. Therefore, the compared goods and services are similar and of a similar kind. The Board found that the word JUUKSESTUUDIO (\u201cHair studio\u201d in English) in the applicant\u2019s trademark is a descriptive element showing the kind of services, which is why the dominant part in both trademarks is the phrase BEAUTY BAY, that is visually, conceptually and phonetically identical.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No.<\/strong> 1054-o<\/strong><\/p>\n\n\n\n

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

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

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

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

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

The Board found that due to the coinciding word INTERACT, the opposed trademark is confusingly similar to the opponent\u2019s earlier trademarks, despite the fact that in addition to the word INTERACT, the opponent\u2019s combined trademarks also include a circular design element, the word CLUB and the sign I. The Board agreed with the opponent that due to the pronunciation of the word INTERACT, the comparable trademarks are phonetically similar. The Board also noted that the trademarks are conceptually similar because the dominant parts INTERACT in both signs are overlapping.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No.<\/strong> 1753-o<\/strong><\/p>\n\n\n\n

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

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

The opponent claimed that the applicant has filed the application in question in bad faith, since the member of the board of the applicant used to work for the opponent, creating and leading the Moekino project (\u201cFashion cinema\u201d in English).<\/p>\n\n\n\n

The Board ascertained that the contract signed between the opponent and the member of the board of the applicant included an item, pursuant to which the parties agreed that if, under the agreement, a work (works) to which copyright arises is created, the rights of the respective works, in particular those that are transferable, including but not limited to proprietary rights, shall be vested in the opponent. In the view of the Board, it has been proven that the applicant knew that for a long time, the opponent has organized the MOEKINO program within the framework of its film festival. The applicant had contractual relations with the opponent and objective circumstances show that the applicant\u2019s intent when filing the application and using the sign in question, was to take the opponent\u2019s place and organize the MOEKINO program without the opponent\u2019s consent.<\/p>\n\n\n\n

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

<\/p>\n\n\n\n

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Decision No.<\/strong> 1747-o<\/strong><\/p>\n\n\n\n

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

THREE BARRELS<\/strong><\/p>\n<\/div>\n\n\n\n

\n

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

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

The Board found that the word \u201cBARRELS\u201d in the compared trademarks does not have a highly distinctive character when it comes to (strong) alcoholic beverages in class 33 \u2013 the word is descriptive and customary in relation to those goods. In this case, the words \u201cTHREE\u201d and \u201cSEVEN\u201d preceding the word \u201cBARRELS\u201d in the compared trademarks, are clearly different. Since the consumer does not associate the word \u201cBARRELS\u201d with one specific entrepreneur, then based on the preceding words Seven vs THREE, that are visually, phonetically and semantically different, the trademarks as a whole should be considered sufficiently different.<\/p>\n\n\n\n

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

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

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

Decision No.<\/strong> 1738-o<\/strong><\/p>\n\n\n\n

The applicant disputed the Patent Office\u2019s decision to refuse to register the trademark NUTIKASSA (\u201csmart cashier\u201d in English) for some applied services in classes 35 and 36. The Patent Office found that the trademark NUTIKASSA lacks distinctiveness for these services and that the sign is descriptive.<\/p>\n\n\n\n

The Board didn\u2019t agree with the applicant that there is no such word in the Estonian language as NUTIKASSA. NUTIKASSA is a compound word that consists of two parts NUTI and KASSA, and there a different widely used words with the prefix NUTI (\u201csmart\u201d in English) in the Estonian language, for example: smart phone, smart device, smart rent, smart store, smart home, smart house etc. The Board found that throughout the proceedings, the applicant has failed to prove that the consumers associate the sign NUTIKASSA first and foremost\/solely with the applicant and noted that other self-service cashiers are also called smart cashiers in spoken language.<\/p>\n\n\n\n

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

\n\n\n\n

Decision No.<\/strong> 1754-o<\/strong><\/p>\n\n\n\n

The applicant disputed the Patent Office\u2019s decision in part with which they refused to register his trademark<\/p>\n\n\n\n

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

in class 43 for \u201ctemporary accommodation\u201d due to an earlier company name O\u00dc Lydia Hotell.  The applicant admitted that the company name O\u00dc Lydia Hotell is earlier than his trademark application but found that since the company has not applied for the name of the hotel \u201cLydia\u201d to be protected as a trademark, then the company has taken the risk that the applicant will legally acquire that sign as a trademark.<\/p>\n\n\n\n

The Board fully agreed with the Patent Office, noting that the Trademark Act does not only include trademarks as earlier rights, but company names as well. The fact that the owner of an earlier company name has not applied to register the trademark \u201cLYDIA\u201d, is irrelevant, because the company already owns earlier rights based on their company name.<\/p>\n\n\n\n

The appeal was dismissed.<\/strong><\/p>\n\n<\/div><\/div>\n\n

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Court Decisions<\/h3>\n\n\n\n

Circuit Court of Tallinn, civil case No. 2-16-4917<\/strong><\/p>\n\n\n\n

The defendant opposed the Patent Office\u2019s decision to register the claimant\u2019s trademark \u201esolar4you free energy\u201c, claiming that it is similar to his earlier registered trademark \u201eSolar4You\u201c. The Industrial Property Board of Appeal sustained the defendant\u2019s opposition on the reason that the trademarks are similar and goods-services marked by these trademarks are similar and identical. The claimant filed a claim with the County Court, asking to declare the defendant\u2019s exclusive rights to the trademark  \u201eSolar4You\u201c extinguished or alternatively, to declare that there are no circumstances precluding legal protection for the trademark \u201esolar4you + kuju\u201c.<\/p>\n\n\n\n

Harju County Court sustained the claim and declared the defendant\u2019s exclusive right to the trademark \u201eSolar4You\u201c extinguished. The Court found that the defendant has failed to present evidence that would prove the actual existence, production and selling or activities directed at selling, of goods marked by the trademark, during five the 5 years preceding the claim.<\/p>\n\n\n\n

In his appeal, the defendant sought the annulment of the County Court\u2019s decision and dismissal of the claim by a new decision. According to the defendant, he has demonstrated the actual use of the mark and the County Court has wrongly disregarded the view expressed by the Court of Justice in Case C-416\/04 on genuine use of the trademark where use of the trademark is restricted in part of marketed goods or customers.<\/p>\n\n\n\n

The Circuit Court dismissed the appeal but partially amended the grounds of the decision. The appellant had repeatedly made allegations of alleged bad faith in the claimant\u2019s conduct, considering that the claimant wishes to start using a sign similar to the earlier registered trademark of another person and, in the event of a dispute, tries to find ways to get rid of the obstacle. The Chamber acknowledged that the County Court had not responded to that objection in the contested decision. The Chamber noted that, in the absence of actual use of the earlier registered trademark by the defendant in the present civil case, the claimant\u2019s behavior in filing its application for registration as well as in the use of a trade and domain name similar to the trademark could not be contrary to the principle of good faith.<\/p>\n\n<\/div><\/div>\n\n

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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 29th 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-926","post","type-post","status-publish","format-standard","hentry","category-news"],"acf":[],"_links":{"self":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/926","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=926"}],"version-history":[{"count":4,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/926\/revisions"}],"predecessor-version":[{"id":1454,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/posts\/926\/revisions\/1454"}],"wp:attachment":[{"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/media?parent=926"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/turvaja.ee\/en\/wp-json\/wp\/v2\/categories?post=926"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}