The Board of Appeal has upheld an opposition filed by the International Olympic Committee (IOC) against the registration of the trademark OLYMPIC-CITY CASINO for services in Classes 41 and 43 of the Nice Classification (Case 941-o, October 23 2008).
Estonian company Olympic Casino Group AS
applied for the registration of the trademark OLYMPIC-CITY CASINO for entertainment services (including gambling) in Class 41 and services “for providing food and drink” in Class 43. The IOC opposed the application based on its trademark THE OLYMPICS, which is registered for services in Classes 41 and 43, among other things.
The Board of Appeal upheld the opposition on the following grounds:
- The marks are similar from a visual point of view, as the dominant element of both marks is the word ‘Olympic(s)’. In contrast, the words ‘city’ and ‘casino’ are descriptive and commonly used.
- The marks are similar from a phonetic and conceptual point of view.
- The marks covered identical services.
- There was thus a likelihood of confusion between the marks.
In its defence, Olympic Casino argued that it is the largest casino operator in Estonia and that its mark is well known in the country. The Board of Appeal found that the trademark OLYMPIC-CITY CASINO suggested the existence of a link between the words ‘Olympic’ and ‘city’. Therefore, the mark was likely to be perceived as referring to “a city where the Olympic Games are organized” (the sailing regatta of the 1980 Moscow Olympics Games was held in Tallinn, the capital of Estonia).
Olympic Casino also argued that its trademark did not reproduce the Olympic symbol, which is protected under the Nairobi Treaty on the Protection of the Olympic Symbol
. The board rejected this argument, as the opposition was based only on the IOC’s rights in the trademark THE OLYMPICS, and not on the treaty.
Olympic Casino also claimed that it had successfully registered the trademark OLYMPIC CASINO in Estonia before the IOC registered the mark THE OLYMPICS in the country. However, the board held that Olympic Casino should have opposed the registration of the trademark THE OLYMPICS in order to enforce its earlier trademark rights in Estonia.
Almar Sehver, AAA Legal Services, Tallinn