A&O trademark held to be invalid

The Tallinn District Court has ordered the cancellation of the trademark A&O for goods in Class 16 of the Nice Classification on the grounds that it is descriptive (Case 2-05-23329, January 15 2008).

Estonian publishing company Eesti Entsüklopeediakirjastuse AS (EEK) is the owner of the trademark A&O for goods in Class 16. The trademark has been in use in Estonia since 1984. Another Estonian publishing company, AS TEA Kirjastus, published an Estonian version of the book The Seven Essentials of Woodworking under the name Puutöö A&O (which may be translated as 'Woodworking A&O').

On December 22 2005 EEK filed suit against TEA for trademark infringement, seeking the destruction of the books and claiming Ekr23,600 (approximately €1,500) in damages for loss of profits (ie, the amount that a licence to use the mark would cost). TEA counterclaimed for a declaration that the trademark A&O was invalid on the grounds that it:

• lacks distinctiveness;
  
  
• is descriptive; and
  
  
• is commonly used in everyday language and business practice.

TEA stated that the term 'A&O' was used in the Bible to describe something of the utmost importance.

On March 19 2007 the Harju County Court upheld EEK's claim and dismissed TEA's counterclaim. The court found that although A&O is used in everyday language, it does not describe the characteristics of the relevant goods in Class 16. The court was not convinced that the term 'A&O' was used in business practice, since its use was mainly based on licences obtained from to EEK.

Therefore, the court found that TEA had infringed EEK's rights in the A&O trademark by publishing a book entitled Puutöö A&O. The court ordered that TEA cease the infringement and pay Ekr23,600 in damages and Ekr52,900 in legal costs to EEK. The court also ordered the destruction of all unsold copies of the book.

TEA appealed to the Tallinn District Court. The court held that the term 'A&O' in the title of the book described the fact that the publication contained the most important information on the subject matter discussed in the book. The court also found that the term 'A&O' had been used for several handbooks since as early as 1937. The court thus concluded that the A&O mark lacked distinctiveness, was descriptive and was commonly used.

Therefore, the Tallinn District Court:

• reversed the first instance decision;
  
  
• cancelled the mark A&O;
  
  
• dismissed EEK's trademark infringement action; and
  
  
• ordered EEK to pay Ekr60,000 (approximately €3,835) in legal fees to TEA.

EEK has filed a cassation appeal with the Supreme Court. Whether the Supreme Court will grant leave to appeal remains to be seen.

Almar Sehver, AAA Legal Services, Tallinn