Court dismisses infringement action and rebukes plaintiff for following wrong procedure

The County Court of Harju has dismissed an action filed by ABC Kliima OÜ alleging infringement of its exclusive trademark rights by Kodukliima Grupp OÜ (Decision 2-13-37567, January 20 2014). The decision came into force on February 21 2014.

Plaintiff ABC Kliima OÜ owns the registered figurative trademark ABC KODUKLIIMA SALONG (No 45822, filed on July 19 2007) in Classes 9, 11, 17, 35, 37 and 42 of the Nice Classification:

The word combination ‘ABC Kodukliima Salong’ (‘ABC Home Climate Salon’ in English) was not disclaimed.

On February 11 2013 defendant Kodukliima Grupp OÜ filed an application (No M201300165) for registration of the figurative mark KODUKLIIMA (‘Home Climate’ in English) in Classes 11, 35 and 37:

The word ‘Kodukliima’ (‘Home Climate’) was not disclaimed.

According to Article 57(1) of the Estonian Trademarks Act, the “proprietor of a trademark may file an action against a person infringing its exclusive right… for termination of the offence”. The plaintiff filed an action against the defendant alleging infringement its exclusive rights, and requesting that the defendant stop using the sign KODUKLIIMA in the course of trade and remove it from the market. Both companies are active in the field of selling, marketing and installing air-pump conditioners with cooling and heating functions.

The plaintiff claimed that use of the sign KODUKLIIMA would be detrimental to, and would take unfair advantage of, the reputation of the mark ABC KODUKLIIMA SALONG. The plaintiff further alleged that the defendant acted in bad faith with the intention of exploiting its investment in the mark ABC KODUKLIIMA SALONG. Finally, the plaintiff argued that the word ‘Kodukliima’ had distinctive character and had not become ordinary in the course of trade. Therefore, there was a likelihood of confusion between the two trademarks.  

The defendant argued that there was no likelihood of confusion between the marks and that the plaintiff should not be allowed to monopolise the words ‘Kodu’ (‘home’) and ‘Kliima’ (‘climate’). The defendant claimed that the word combination ‘Kodukliima’ was descriptive and, therefore, the plaintiff had no exclusive rights over that part of its trademark. The defendant submitted to the court a decision issued by the Estonian Patent Office confirming the registration of its KODUKLIIMA mark.

The County Court of Harju dismissed the action, stating that it would not analyse a case on a point of substantive law. The court found that there were no grounds for the action as both companies owned registered trademarks containing the word ‘Kodukliima’. The court stated that the plaintiff should have taken these circumstances into consideration before raising a claim. According to Article 41(2) of the Trademarks Act, an interested person may contest an applicant’s right to a trademark before the Industrial Property Board of Appeal if there are circumstances which preclude legal protection of that mark. Therefore, before filing an action with the court, the plaintiff should have followed the pre-court procedure at the Board of Appeal.

Anneli Kapp, Käosaar & Co, Tartu