ANNA Case sees change to Board of Appeal practice

In Verlag Aenne Burda GmbH & Co v Estonian Patent Office (Case 481-o2), the Estonian Board of Appeal has reconsidered an earlier decision following an appeal ruling in the same case (see Landmark ANNA Case may see change to Patent Office practice). The appeal ruling stated that the Board of Appeal's practice of allowing the coexistence of identical or confusingly similar marks, where one was registered for goods and the other for services, was incorrect. The Board of Appeal has now changed its practice so that it is in line with the appeal ruling.

Finnish publishing company Yhtyneet Kuvalehdet OY applied to register the word mark ANNA for publishing services in Class 41 of the Nice Classification. Verlag Aenne Burda, a German company, opposed the registration on the basis that the mark was confusingly similar to its prior, identical registration of ANNA in Class 16 for printed matter. It argued that the proposed registration was in the same field of business, as publishing services are necessarily involved in the creation and distribution of printed matter.

The Board of Appeal dismissed the opposition on the grounds that (i) publishing services and printed matter are not the same because the former relates to services, while the latter covers goods, and (ii) the purpose of the Trademarks Act is not to limit the number of trademarks as this hinders free competition. It also noted that the trademark examination practice in other countries, which may prevent such registrations, is not applicable in Estonia. Verlag Aenne Burda appealed to the Administrative Court of Tallinn.

The court upheld the appeal and refused registration of Yhtyneet Kuvalehdet's ANNA mark. It held that although the registration covered only services and not goods, the services were closely related to the goods covered by the earlier trademark. The court did not follow a previous line of reasoning that suggested that, in principle, goods and services cannot be considered similar. It stated that it is not possible to draw an exact line between goods and services, if the goods and services are similar in essence. Yhtyneet Kuvalehdet did not appeal.

The Board of Appeal decided to reconsider its earlier decision in light of the Administrative Court's findings and issued a new ruling abandoning its original position.

Urmas Kernu, AAA Legal Services, Tallinn