Action for cancellation of building board mark falls flat
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The Harju County Court has dismissed an action for the cancellation of the trademark LUJA on the grounds of non-use (Case 2-07-32895, July 10 2008).
Richardi Rahvusvahelise Kaubanduse OÜ (RRK) filed an application for the registration of the trademark LUJA PLAAT for “building materials, except building boards made of fibre cement” in Class 19 of the Nice Classification. The Estonian Patent Office rejected the application on the grounds that the mark applied for was confusingly similar to the earlier trademark LUJA for “building boards made of fibre cement” in Class 19, which was registered by Finnish company Oy Minerit in 1997.
RRK subsequently filed an action for the cancellation of the trademark LUJA with the Harju County Court on the grounds that the mark had not been used in Estonia during a period of five years. This argument was based on information available on the website of the franchisee of Oy Minerit in Estonia.
Alternatively, RRK requested that the court allow the registration of the trademark LUJA PLAAT.
In its defence, Oy Minerit argued that it had used the trademark LUJA in Estonia during the relevant period. It presented the following evidence:
- statements by resellers who had sold building boards bearing the trademark LUJA in Estonia;
- advertising material showing LUJA-branded building boards, which was available in building materials stores and trade fairs;
- a manual detailing the different types of Luja boards;
- the company’s stamp of authenticity on Luja boards exported to Estonia;
- invoices demonstrating that 372,368 square metres of Luja boards were sold during the preceding five years in Estonia; and
- an article entitled “Luja is a popular building product” (published in well-known economic newspaper Äripäev), according to which Luja boards were used for the construction of several well-known buildings in Estonia.
The court concluded that the evidence was adequate and refused to remove the trademark from the register. The court did not deem it necessary to review the alternative claim.
Kärt Laigu, Käosaar & Co, Tallinn
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