Board of Appeal dismisses opposition of CRAFTSMAN TOOLS mark after opponent transfers rights in earlier CRAFTSMAN marks
- US company Sears Brands, LLD opposed the application for the figurative trademark CRAFTSMAN TOOLS based on its earlier Estonian word mark CRAFTSMAN and EU word mark CRAFTSMAN in Classes 7, 8 and 9.
- The Board of Appeal dismissed the opposition, holding that the opponent was no longer the rights holder of the earlier trademarks at the time of composing the decision and therefore had no legitimate interest.
- The board stated that in light of the transfer of the trademark rights, it would have been possible for the new owner of the CRAFTSMAN marks to replace the opponent, but neither party submitted such a request.
The Estonian Patent Office Board of Appeal has dismissed an opposition against the registration of the figurative trademark CRAFTSMAN TOOLS by OÜ Industry Distribution on the grounds that the opponent had no legitimate interest (Decision 1701-o, 28 June 2019).
On 3 November 2015 Estonian company Industry Distribution applied to register the figurative trademark CRAFTSMAN TOOLS for goods in Classes 7 and 8 and services in Class 35 of the Nice Classification (Application M201501109).
US company Sears Brands, LLD opposed the application before the Board of Appeal based on its earlier Estonian word mark CRAFTSMAN (No 30002) and EU word mark CRAFTSMAN (No 000091025) in Classes 7, 8 and 9.
The opponent argued the following:
- The dominant element of each mark was the word ‘craftsman’.
- The word ‘craftsman’ is distinctive.
- The trademarks were visually, phonetically and conceptually similar.
The opponent stated that the application should be refused under Article 10(1)(2) of the Trademarks Act, according to which legal protection cannot be granted to a trademark that is similar to an earlier mark registered for identical or similar goods or services if there is a likelihood of confusion among consumers, including a likelihood of association with the earlier mark. The opponent claimed that as the figurative mark CRAFTSMAN TOOLS was highly similar to the earlier word mark CRAFTSMAN, there was a likelihood of confusion.
Further, the opponent argued that CRAFTSMAN was a well-known mark in Estonia. Therefore, the application should be refused under Article 10(1)(3) of the Trademarks Act, which states that legal protection cannot be granted to a trademark that is similar to an earlier registered mark or a trademark which is known to the majority of the Estonian population if the use of the later mark may take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark acquired before the filing date of the application.
Finally, the opponent argued that the applicant had acted in bad faith by applying for the figurative mark CRAFTSMAN TOOLS.
The applicant responded by stating that the word element ‘craftsman’ designated the kind, intended purpose and other characteristics of the goods. It argued that there was no likelihood of confusion between the marks and that the opponent’s approach was misleading because the applicant had filed a figurative mark; therefore, the comparison between only the word elements did not take into account the figurative mark as a whole. In addition, the likelihood of confusion with regard to the visual, aural or conceptual similarity of the marks must be based on the overall impression created by them.
Further, the applicant argued that the opponent had failed to prove its use of the CRAFTSMAN mark in Estonia, not to mention the fact that there was no evidence of the mark being well known in the country. Moreover, the applicant pointed out that the evidence submitted by the opponent and the new owner of the CRAFTSMAN mark did not match.
Finally, the applicant emphasised that the opponent could not simply assume bad faith and that it should at least provide indirect evidence in this respect.
The Board of Appeal dismissed the opposition, holding that although the opponent was the owner of the earlier CRAFTSMAN trademarks registered in Estonia and the European Union, according to the databases, these earlier marks had been transferred to the new owner, STANLEY BLACK & DECKER, INC, US. Therefore, the opponent was no longer the rights holder of the trademarks at the time of composing the decision. According to Article 41(2) of the Trademarks Act, an interested person may contest an applicant’s right to register a trademark at the Board of Appeal. However, if the opponent has assigned or transferred its trademarks to another party, then there are no grounds to continually consider it to be a person with a legitimate interest.
The board stated that in light of the transfer of the trademark rights, it would have been possible for the new owner of the CRAFTSMAN marks to replace the opponent, but neither the opponent nor the new owner submitted such a request. Therefore, the opposition failed to satisfy the board, which found that opponent Sears Brands, LLD did not constitute an interested person.
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