Gulf International wins GULF war

In Gulf International Lubricants Ltd v Gulf Oil Estonia AS (Case 501), the Patent and Trademark Office's Board of Appeal has refused the defendant's application to register the word 'Gulf' and related logo. The board held that (i) although there was no evidence that the plaintiff had used its mark in Estonia, it is well known in that country, and (ii) the defendant had attempted to register the mark in bad faith because one of its board members had lived in a country where the plaintiff uses the GULF mark.

Gulf Oil Estonia applied to register the word 'Gulf' and a logo for a range of goods and services, particularly the retail and wholesale of oil-based fuel and lubricants. Before filing its trademark registration application, Gulf Oil conducted a trademark search that did not reveal any identical or similar trademark or business name registrations in Estonia.

Gulf International Lubricants owns a number of registrations in various countries (but not Estonia) for a GULF mark and logo. It brought opposition proceedings before the Board of Appeal, arguing that Gulf Oil's registration would be identical to its GULF mark. It also claimed that although it had not registered the mark in Estonia, it is well known in that country and should be protected pursuant to Article 6bis of the Paris Convention for the Protection of Industrial Property. It further argued that since one of Gulf Oil's board members had lived in the Netherlands, a country in which GULF had been registered and is well known, Gulf Oil had filed its application in bad faith.

Gulf Oil counterclaimed that the Paris Convention applies only to well-known marks and that Gulf International had not proved sufficient notoriety of its mark in Estonia to justify protection. It further maintained that the Gulf Oil board member highlighted by Gulf International had not been aware of the GULF mark during his stay in the Netherlands.

The Board of Appeal agreed with Gulf International and refused the registration. It held that Gulf International's mark is well known in Estonia by virtue of the length of time it has been in the marketplace and its international renown. It was very likely, added the board, that Estonian businesses in the oil industry would be aware of the GULF mark. The board also found that the application had been filed in bad faith because (i) Gulf Oil's proposed mark was essentially a reproduction of Gulf International's mark, and (ii) the board member with links to the Netherlands should have been aware of the GULF mark and its notoriety in Benelux countries.

Urmas Kernu, AAA Legal Services, Tallinn