Design for ceramic souvenir gets second chance on appeal

The Estonian Board of Appeal has reversed a decision by the Estonian Patent Office in which the latter refused to register an industrial design for a ceramic souvenir (January 29 2008).

Tatjana Zolotukhina applied to register an industrial design for a ceramic souvenir representing the Viru Gate in Tallinn (Application D200500056E). On March 15 2006 the Patent Office refused to register the design. Pursuant to Paragraph 10(1) of the Estonian Industrial Design Protection Act, protection cannot be granted to an industrial design which contains a symbol or an element of a symbol, unless a competent authority or official has given written consent thereto. The office held that the Viru Gate is one of the symbols of Estonia and, in particular, of the city of Tallinn. Therefore, the consent of the Tallinn City Government was necessary in order to register the design.

The Trademark Commission of the Tallinn City Government refused to give consent and the office thus dismissed the application.

On appeal, Zolotukhina claimed that the office had failed to provide the list of official symbols of Estonia and its administrative units. Therefore, Zolotukhina alleged that there was no evidence that the Viru Gate is a symbol of Tallinn or Estonia.

The Board of Appeal held that besides the city's flag and coat of arms, other signs may function as symbols provided that such signs are:

• linked to Tallinn in people's minds; and
  
  
• independent from any regulatory documentation or directory.

The board thus examined whether the Viru Gate is considered as a symbol of Tallinn in light of these criteria. It concluded that the answer might be affirmative, but deemed that this finding was not binding in the case at hand.

Finally, the board stated that the design applied for accentuated certain details that do not feature on the Viru Gate. Therefore, the board found that the design was not a true copy of the gate. As a consequence, the issue of whether the Viru Gate is a symbol of Tallinn was irrelevant.

The board thus allowed the appeal and requested that the office reconsider its original decision.

Kärt Laigu, Käosaar & Co, Tallinn