Article 8 of Paris Convention does not have direct effect
In Helsingin Radioviestintä Oy v Taevaraadio AS (Case 3- 420/2004), the Administrative Court of Tallinn has ruled that Article 8 of the Paris Convention for the Protection of Industrial Property, which relates to the protection of trade names, does not have direct effect in Estonia.
Taevaraadio AS, an Estonian company, applied to register the trademark KISS FM for radio broadcasting, radio entertainment and production of radio programmes. Finnish companies Helsingin Radioviestintä Oy and Helsinkin Paikallinen Radio Oy (HPRO) opposed the application relying on, among other things, Article 8 of the Paris Convention, which provides that a trade name shall be protected in all signatory countries without the obligation of filing or registration, whether or not it forms part of a trademark. They claimed that the mark KISS FM could not be registered, as it is one of HPRO's auxiliary trade names.
The Administrative Court first examined Professor G Bodenhausen's Guide to the Application of the Paris Convention and stated that Article 8 does not have direct effect in Estonia. In his book, Bodenhausen concludes that although Article 8 prescribes that a trade name should be protected, it does not specify how such protection should be achieved. Member states are free to regulate such protection by way of special legislation, unfair competition law or any other appropriate means. On this basis, the court held that Article 8 merely obligates the signatory states to regulate the protection of trade names through national law.
Having come to the above conclusion, the court analyzed relevant national law and, in particular, the Estonian Commercial Code. This provides, among other things, that:
- a trade name is a name entered into the Commercial Register;
- an undertaking can have only one trade name; and
- a trade name has to include an attribute that relates to the type of undertaking concerned.
The court noted that the Finnish Commercial Register records that HPRO's trade name is Helsingin Paikallinen Radio Oy. That trade name corresponds to the requirements and definition of a trade name under Estonian law. It held that although HPRO used the name Kiss FM as an auxiliary trade name for radio broadcasting in the regions of Helsinki, Turu, Tampere and Oulu, pursuant to Estonian law an undertaking registered in the Commercial Register cannot have an auxiliary or second trade name. The court concluded that it is fair and logical that Estonian law should not grant broader protection to a foreign trade name than to a national trade name.
Mari Toomsoo, Käosaar & Co, Tallinn
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