GAMBLER wins at the Estonian Board of Appeal

The Estonian Board of Appeal has issued its decision in an opposition action involving tobacco companies House of Prince A/S and Republic Tobacco LP (Case 906-o, July 12 2007).

On the basis of its earlier RAMBLER mark, Danish company House of Prince A/S opposed an application to extend protection to Estonia of the international registration for the trademark GAMBLER filed by US company Republic Tobacco LP.

Although Republic Tobacco did not respond to the opposition, the board nevertheless carried out a full analysis of the opposition, as required under the opposition procedure and the practice of the board. It found that the marks were dissimilar.

The board agreed that the goods were identical (ie, tobacco products), but found that the difference in the semantic meaning of the marks overrode the similarities. Although a considerable number of Estonian consumers are likely to know the meaning of the word 'gambler', the same cannot be said for the word 'rambler'.

Surprisingly, the board held that due to this semantic difference, there was no need to examine the visual and phonetic similarities between the marks.

House of Prince also claimed that the trademark RAMBLER had an inherent distinctive character. However, the board turned this argument against House of Prince, stating that the distinctive character of the trademark RAMBLER helped to differentiate it from the trademark GAMBLER.

Almar Sehver, AAA Legal Services - Advocates and Legal Consultants, Tallinn