Appeals on registration issues can bypass Board of Appeal

Two decisions issued by the Estonian courts indicate that, in most circumstances, an interested party may file an appeal against a Patent Office (PO) registration decision directly with the courts instead of the Board of Appeal. One case comes from the Estonian Supreme Court and was heard under the old Trademark Act, while the other was heard under the new act, in force since May 1 2004, by the Tallinn District Court.

The case before the Estonian Supreme Court involved the Finnish Company Kesko OYj (Case 3-3-1-65-04, October 14 2004). It had filed an appeal straight to the Tallinn Administrative Court against the PO's decision to allow the registration of the mark K-RAUA in the name of Estonian company KR Kaubanduse AS.

The court declared the appeal as inadmissible, holding that cancellation actions must be submitted to the Board of Appeal. It also found that, in any event, the appeal had been filed after the appeal period had passed. It stated that, according to the (old) Trademark Act, there is a five-year term within which to submit a cancellation action before the Board of Appeal, but no such regulation exists when filing an appeal to the courts. Kesko appealed.

The Tallinn District Court overturned the decision in part. It ruled that there is no obligation to file a cancellation action with the Board of Appeal and interested persons may submit an appeal directly to court. However, it upheld the lower court's finding that the general appeal term of 30 days should apply.

On further appeal, the Supreme Court agreed that appeals in cancellation actions may be filed directly with the courts instead of the Board of Appeal. However, it stated that the same five-year term for filing an appeal to court should apply as that stipulated for submitting a cancellation action to the Board of Appeal. Applying a shorter appeal period would be unjust.

Although this decision was made under the previous Trademark Act, a decision of the Tallinn District Court seems to show that the same is true under the new act.

The case stemmed from Cloetta Fazer AB's application to register the mark TYRKISK PEBER for goods in Class 30 and 33 of the Nice Classification. The PO refused registration and Cloetta appealed to the Tallinn Administrative Court. The court declared the appeal inadmissible, finding that refusals are subject to an obligatory appeal procedure before the Board of Appeal.

On appeal, the Tallinn District Court found that the (new) Trademark Act did not mention such an obligation (Case 2-3/977/04, October 5 2004). It held that appeals need only be filed with the Board of Appeal where the law clearly stipulates that this is necessary. As no such obligation was present in the case at hand, it reasoned that Cloetta was free to pursue the appeal before the courts.

Almar Sehver, AAA Legal Services, Tallinn