Relative grounds of refusal changes implemented

On January 1 2007 an amendment to the Trademark Act came into effect which changed the relative grounds of refusal in relation to earlier trade names. According to the previous wording of the Trademark Act, no legal protection could be granted to trademarks which were identical or confusingly similar to a business name entered in the commercial register prior to the filing date of the trademark application or the priority date if the area of activity in respect of which a notation had been made in the articles of association mirrored the goods or services set out in the trademark application. As a result, when examining relative grounds for refusal, the Patent Office took into account all fields of activity mentioned in the articles of association despite the fact that the company might have been active only in some of them.

Changes to the Commercial Code, whereby companies must outline their fields of activity of the previous year and the planned areas of interest for the next year in the annual accounts filed in the Commercial Register, means that the register, as opposed to the articles of association, reflects more accurately the actual fields of activity covered by a trade name.

As a result, the wording of the Trademark Act has been changed so that no legal protection is granted to a trademark which is identical or confusingly similar to a trade name entered in the commercial register prior to the filing date of the trademark application or the priority date if the mark covers goods and services for which the trade name is used or is going to be used. In practice, when comparing a trademark with an earlier trade name, the Patent Office will now consider only the fields of activity that were mentioned in the annual report filed before the trademark application date, date of international registration or priority date.

Mari Toomsoo, Käosaar & Co, Tallinn