National mark can defeat Community registration with court approval

The Patent Office of Estonia (PO) has issued a declaration stating that in the event of conflict between national and Community trademarks following Estonia's accession to the European Union, the owner of a national mark will have the right to file a lawsuit with the national courts to prohibit the use of a conflicting Community trademark in Estonia.

The PO issued the declaration in response to press speculation concerning the rebranding of telephone services provider Eesti Telefon. Eesti Telefon was relaunched under the name 'Elion' in August of this year to reflect the fact that it no longer has a monopoly over the operation of the national telephone system and has broadened its services to include other areas of telecommunications and information technology. It has announced plans to register the name 'Elion' as a trademark and will no longer use its well-known EESTI TELEFON mark.

Following the announcement, a number of articles appeared in the local press suggesting that Eesti Telefon may be prohibited from using the mark once Estonia accedes to the European Union on May 1 2004 because a Spanish technology company owns a Community trademark registration for ELION. The Spanish company - Elion SA - enjoys exclusive rights to the mark in the European Union and confirmed that it does not intend to let any other party use an identical trademark for similar goods and/or services in the European Union.

In answer to the speculation, the PO issued a declaration stating that, as agreed during the accession negotiations between Estonia and the European Union, in the event of conflict between Estonian and Community trademarks, the owner of a national mark is entitled to bring an action before the Estonian courts to prohibit the use of a Community trademark in Estonia. This gives national trademark owners, and in this case Eesti Telefon, a distinct advantage. However, it is worth emphasizing that the right is not automatic and any order for prohibition of use of a Community trademark does not make the registration invalid in Estonia. If, for example, another party decides to register the term 'Elion' as a trademark in Estonia for identical or similar goods and services as those offered by Eesti Telefon and Elion SA, it must request the consent of both.

Kaie Puur, Käosaar & Co, Tartu