Landmark ANNA Case may see change to Patent Office practice

Estonia

In Verlag Aenne Burda GmbH & Co v Yhtyneet Kuvalehdet Oy (Case 3-1061/2003), the Administrative Court of Tallinn has issued a landmark ruling, holding that there are certain circumstances in which identical or confusingly similar marks should not be allowed to coexist, even if one of them is registered for goods and the other for services.

Verlag Aenne Burda, a German company, registered in 1994 the trademark ANNA for printed publications in Class 16 of the Nice Classification, in particular for fashion magazines, handicraft sheets, knitting patterns, paper stencils, patterns and photographs. In 1999 Yhtyneet Kuvalehdet, a Finnish publishing company, applied for registration of an identical trademark for publishing services in Class 41.

The Estonian Patent Office allowed Yhtyneet Kuvalehdet's application for registration even though it was identical to Verlag Aenne Burda's earlier mark because its practice was to allow the coexistence of identical marks if one of them covered goods and the other covered services. Verlag Aenne Burda appealed to the Industrial Property Board of Appeal. However, the board found that the Patent Office's practice was correct pursuant to the Trademark Act. Verlag Aenne Burda appealed to the Administrative Court of Tallinn.

The court overturned the board's decision and refused registration of Yhtyneet Kuvalehdet's mark. It held that although the registration covered only services and not goods, the services were closely related to the goods covered by the earlier trademark. It noted that Yhtyneet Kuvalehdet is a publisher and had indicated in its application that it was intending to use the mark in conjunction with printed material, while Verlag Aenne Burda's mark also covers printed publications. Therefore, if Yhtyneet Kuvalehdet's registration were allowed, it was possible that Verlag Aenne Burda's ANNA mark would no longer serve its main function of distinguishing its goods and services from those of other companies.

This decision is an exception to previous Administrative Court decisions, which have indicated that, in principle, goods and services cannot be considered similar. It will be interesting to see whether the Patent Office alters its practice and takes the ANNA Case into consideration.

Mari Toomsoo, Käosaar & Co, Tartu

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