Gulf International edges second GULF conflict


In Gulf International Lubricants Ltd v Gulf Oil Estonia AS (Case 501), the Administrative Court of Tallinn has upheld in part a decision of the Estonian Board of Appeal to refuse the defendant's GULF registration. The court rejected the board's finding that the plaintiff's own GULF mark was well known in Estonia at the time of the application but agreed that the defendant had made the application in bad faith.

As reported by World Trademark Law Report on July 4 2003 (see Gulf International wins GULF war), the board refused Gulf Oil Estonia's application to register a GULF mark and logo for various services in Class 35 of the Nice Classification. It upheld Gulf International Lubricants' opposition action. It held that (i) Gulf International's identical trademark for goods in Class 4 was well known in Estonia, even though it had not been used in that country, due to the international reputation it had gained through use in other countries, and (ii) Gulf Oil had filed its application in bad faith because one of its board members had links to the Netherlands and should therefore have been aware of the fame of the GULF mark in that country.

Gulf Oil appealed to the Administrative Court of Tallinn and the appeal was partially allowed. The court agreed that the evidence submitted by Gulf International did not prove that its GULF mark and logo were famous in Estonia at the time Gulf Oil filed its application. However, the court upheld the board's decision that Gulf Oil had applied for the registration in bad faith. It noted that Article 8(1.10) of the Estonian Trademark Act provides that where the trademarks subject to a dispute are identical, the fact that the marks cover different goods and/or services is irrelevant. In the absence of clear guidelines in the act on the issue of bad faith, the court took into consideration the reasoning of the District Court of Tallinn in Checkers Drive-In Restaurants Inc v Board of Appeal (Case 2-3/549/2003) (see CHECKERS ruling offers extended protection to foreign marks). It affirmed the district court's guidelines, concluding that an application is filed in bad faith if the applicant (i) knows of an identical trademark belonging to another person in use in another country, and (ii) makes the application with the purpose of obtaining the other person's trademark.

Turning to the case at hand, the Administrative Court held that Gulf International's GULF mark and logo were highly distinctive and it was unlikely that Gulf Oil had copied them by chance. In the court's view, the distinctiveness and international fame of the GULF trademark, added to the fact that one of Gulf Oil's board members had constructive knowledge of the mark's fame, suggested that Gulf Oil had filed its application in bad faith to take advantage of the reputation of Gulf International's mark.

Kaie Puur, Käosaar & Co, Tartu

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