Recognition of K-RAUTA's fame beats K-RAUA off the register - for now

The Tallinn District Court has overturned a decision of the Administrative Court of Tallinn to reject a cancellation action against the mark K-RAUA by the owner of the earlier mark K-RAUTA (Case 3-03-79, April 20 2006).

Finnish company Kesko OY, which owns several national Estonian registrations for K-RAUTA in Class 35 of the Nice Classification, initiated a cancellation action against the registration of the combination mark K-RAUA held by KR-Kaubanduse AS, registered in respect of retail and wholesale services also in Class 35. The Estonian word 'raua' is a variation of the word 'raud' ('rauta' in Finnish), which means 'iron'.

Kesko initiated a cancellation action with the Administrative Court of Tallinn, where it argued that:

• its K-RAUTA mark is well known;
  
  
• the K-RAUA mark is confusingly similar to its K-RAUTA mark; and
  
  
• the K-RAUA application was filed in bad faith.

The court dismissed the cancellation action on the grounds that Kesko's survey evidence, which purported to demonstrate the notoriety of the K-RAUTA mark, was unreliable because:

• the persons surveyed were active in the trading of building materials;
  
  
• the survey was partly carried out outside Estonia; and
  
  
• the survey was conducted after 2000 (ie, after the application to register K-RAUA was filed in Estonia).

Kesko appealed to the District Court of Tallinn, arguing that the Administrative Court had not assessed the evidence correctly.

The District Court upheld the appeal on the grounds that:

• the Administrative Court did not check the notoriety of Kesko's mark;
  
  
• Kesko's survey evidence was objective according to Article 6bis of the Paris Convention for the Protection of Industrial Property; and
  
  
• the K-RAUTA mark was well known in Estonia.

The District Court did not assess the similarity of the marks, considering the issue irrelevant to the case, and dismissed the claim of bad-faith registration on the grounds that, under the Trademarks Act applicable to the case (ie, the one in force prior to May 1 2004), the bad-faith provision concerned only identical marks, which was not the case in this matter. However, the court ordered the cancellation of the K-RAUA mark.

Even though the Supreme Court refused KR-Kaubanduse AS's leave to appeal on September 1, the case may not be concluded yet: KR-Kaubanduse AS has since filed a new application to register its K-RAUA mark with the Estonian Patent Office.

Urmas Kernu, AAA Legal Services, Tallinn