No disclaimers for well-known marks

In AS Liviko v Estonian Patent Office (Case 627-o), the Estonian Board of Appeal has clarified the use of disclaimers in relation to well-known marks.

AS Liviko, an Estonian company, applied to the Patent Office (PO) to register its well-known VIRU VALGE label mark for vodka. The PO allowed registration but requested that the descriptive words 'Viru' (a geographical location in Estonia) and 'valge' (a common name for 'vodka') should be subject to separate disclaimers. It therefore agreed to grant exclusive rights only in respect of the word combination VIRU VALGE. It rejected AS Liviko's claim that Estonian law indicated that well-known marks were not subject to disclaimers. The PO interpreted the law to mean that disclaimers must be applied to a mark, unless every single part of that trademark is well known. AS Liviko appealed.

The Board of Appeal allowed the appeal, holding that (i) VIRU VALGE is a well-known trademark in Estonia, and (ii) disclaimers for the descriptive elements of a mark are unnecessary, if the trademark as a whole is well known.

It is likely that the PO will amend its practice in light of this decision and other positive changes in this area may occur following the adoption of the new Trademark Act on May 1 2004.

Almar Sehver, AAA Legal Services, Tallinn