CHECKERS ruling offers extended protection to foreign marks

In Checkers Drive-In Restaurants Inc v Board of Appeal (Case 2-3/549/2003), the District Court of Tallinn has ruled that a mark that is visually identical to an opposing mark cannot be registered, even when the goods and/or services covered by the two marks are not identical or of a similar kind, if the opposing mark has been registered outside of Estonia and the applicant has acted in bad faith.

Pepsico Inc filed an application to register CHECKERS for various foodstuffs. Checkers Drive-In Restaurants Inc (CDR) opposed the registration. It stated that the registration was in bad faith on the grounds that it had registered and was using the trademark CHECKERS in the United States, Puerto Rico and Israel. Pepsico responded that although both companies use the word mark CHECKERS, the trademarks were not identical because Pepsico's mark covers goods, while CDR's covers services, specifically restaurant services and franchising. The Patent and Trademark Office allowed Pepsico's application and CDR appealed.

The District Court of Tallinn noted that, pursuant to the Estonian Trademark Act, a trademark that (i) is identical to an earlier mark, and (ii) covers identical or similar goods or services cannot be registered. However, the court went on to say that this is only the case for national registrations. Where the opposing mark has been registered outside of Estonia, the act does not specify that the goods and/or services must be identical or similar.

The court concluded that, in such circumstances, the fact that the marks in dispute are visually identical may be sufficient to allow an opposition action to succeed provided that there is evidence that the application was filed in bad faith. It is not necessary to consider the question of whether the goods and/or services covered by the trademarks are also identical or similar.

However, in the case at hand, the court allowed Pepsico's registration application because it held that CDR had failed to prove that Pepsico had acted in bad faith.

Sven Pääsukene, Käosaar & Co, Tartu