Mark held to take unfair advantage of well-known BBC marks

 The Estonian Board of Appeal has upheld the British Broadcasting Corporation’s opposition against the registration of the figurative trademark BBC BALTIC BOAT CENTER by OÜ Nexus Grupp on the grounds that use of the mark could take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known BBC marks (Decision 917-o, December 28 2011).
On April 17 2003 Estonian company Nexus Grupp applied to register the figurative mark BBC BALTIC BOAT CENTER in Classes 9, 12, 36, 37 and 39 of the Nice Classification (Application M200300597). The word combination ‘Baltic boat center’ was disclaimed.

On October 3 2005 the British Broadcasting Corporation opposed the application based on its prior word mark BBC (Estonian Registration 23931) and its figurative mark BBC (CTM Registration 000219071).
The British Broadcasting Corporation’s well-known figurative marks:
However, as the figurative Community trademark BBC was filed before May 1 2004, it could not be considered as an earlier right in Estonia under the Trademarks Act, which entered into force on May 1 2004 (the act also regulates the relationship between national trademarks and Community trademarks, as Estonia became a member of the European Union in 2004). Instead, the British Broadcasting Corporation claimed that its figurative marks had become well known in Estonia.
The Board of Appeal upheld the opposition, finding that the mark BBC BALTIC BOAT CENTER was confusingly similar to the registered word mark BBC, and that there was a likelihood of confusion on the part of the public in relation to goods in Class 9.
During the proceedings, the British Broadcasting Corporation successfully proved that the word and figurative marks BBC were well known in Estonia. Despite the fact that the BBC marks had a reputation primarily in the field of broadcasting, the board held that the trademarks at issue were still highly similar in Classes 12, 36, 37 and 39, mainly because the graphic element of Nexus Grupp’s mark (ie, the letters ‘B’, ‘B’ and ‘C’ in rectangles) imitated the BBC marks. Therefore, the board found that use of trademark BBC BALTIC BOAT CENTER would take unfair advantage of, and be detrimental to, the distinctive character or repute of the BBC marks.
Nexus Grupp may appeal to the Harju County Court within three months of the publication of the decision.
Anneli Kapp, Käosaar & Co, Tartu

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