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In the long-running dispute between Ülikooli Apteegi OÜ and Yliopiston Apteekki, the Estonian Supreme Court has refused to admit a cassation appeal into the proceedings, thereby putting an end to the matter (Case 2-05-1506, June 21 2010).
Yliopiston Apteekki, whose history dates back to 1755, is Finland’s biggest pharmacy chain. Its trademark YA YLIOPISTON APTEEKKI (and design) is among the five best known marks in Finland. Yliopiston Apteekki sought to expand its activity to Estonia. However, when it entered the market in 2004, it discovered that Finnish citizens, who were its competitors in Finland, had:
- established a company called Ülikooli Apteegi in Estonia; and
- filed a trademark application for ÜA ÜLIKOOLI APTEEGI (and design) in 2003.
'Yliopiston Apteekki' means 'university pharmacy' in Finnish, while 'Ülikooli Apteegi' means 'of the university pharmacy' in Estonian. Because the Finnish and Estonian languages belong to the Finno-Ugric group of languages, Finnish and Estonian consumers could understand both terms. Finnish tourists are important customers for Estonian pharmacies.
Yliopiston Apteekki filed an opposition against the application to register ÜA ÜLIKOOLI APTEEGI in 2004. The opposition was based on:
- Ülikooli Apteegi's alleged bad faith; and
- Yliopiston Apteekki’s Finnish company name.
The Board of Appeal rejected the opposition as unfounded in 2006 and Yliopiston Apteekki appealed to the courts (Case 2-06-31964).
At first instance, the Harju County Court dismissed the action. However, on appeal, the Tallinn District court ruled in favour of Yliopiston Apteekki, finding that the ÜA ÜLIKOOLI APTEEGI mark was visually and phonetically similar to the YA YLIOPISTON APTEEKKI mark, which was not registered in Estonia.
The court also ruled that, in assessing bad faith, the applicant’s knowledge at the time of filing the application should be taken into account. The fact that Ülikooli Apteegi used the same design and concept for its mark showed that it intended to take advantage of the reputation of Yliopiston Apteekki's mark. The court held that where the owners of an Estonian company engaged in the same business as the plaintiff in Finland, who are aware of the plaintiff, its trademark and its intention to expand its activities to the Estonian market, register an Estonian version of the mark using the same design and concept, it can be concluded that the application has been filed in bad faith. A defendant should assume that, due to the close relationship between Estonia and Finland, the registration of such a trademark in Estonia would damage the plaintiff's interests.
Based on the district court's findings, the Estonian Patent Office rejected the application to register ÜA ÜLIKOOLI APTEEGI in 2006.
While the opposition proceedings were pending, in 2005 Yliopiston Apteekki filed another civil claim (Case 2-05-1506) against Ülikooli Apteegi. Yliopiston Apteekki sought a court order prohibiting Ülikooli Apteegi from using the name Ülikooli Apteegi OÜ as a business name and from using the term 'Ülikooli Apteek' and similar designations in its commercial activities. As Yliopiston Apteekki had no prior trademark rights in Estonia, the claim was based on unfair competition law.
The Harju County Court again dismissed Yliopiston Apteekki's claim. However, on appeal, the Tallinn District Court annulled the lower court's decision, finding that it had erred in its application of the substantive law. The case was sent back to the Harju County Court, which rejected the claim for a second time.
In a second appeal, the Tallinn District Court was finally in a position to rule on the merits of the case. It found that Ülikooli Apteegi's choice and use of its business name constituted unfair competition, as it must have been aware of Yliopiston Apteekki's business in Finland and of its intention to expand to Estonia.
Therefore, the court prohibited Ülikooli Apteegi from using its business name. Subsequently, the Supreme Court did not admit Ülikooli Apteegi's cassation appeal into the proceedings, thereby putting an end to the dispute. Ülikooli Apteegi has now changed its name to PharmaInnovation OÜ and Yliopiston Apteekki is running a pharmacy business in Estonia under the trademark YA ÜLIKOOLI APTEEK.
Almar Sehver, AAA Legal Services, Tallinn
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