Supreme Court defines 'interested party' in context of cancellation action
The Supreme Court of Estonia has upheld Industria de Diseño Textil SA (Inditex)’s cassation appeal within the context of an action for the cancellation of the trademark LE DELIZIE ZARA (Decision 3-2-1-167-14, March 11 2015).
On July 23 2003 Luxembourg company FFAUF SA applied to register the word mark LE DELIZIE ZARA in Classes 29 to 33 of the Nice Classification (International Registration No 0834140) pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
On November 28 2012 Inditex filed an action before the County Court of Harju in order to extinguish the exclusive rights of FFAUF, as the registered trademark LE DELIZIE ZARA had not been put into genuine use during five consecutive years. According to Article 53(1)(3) of the Estonian Trademark Act, an interested party may file an action against the proprietor of a trademark for the exclusive right of the proprietor to be declared extinguished if the registered trademark has not been used within the meaning of Article 17 of the act during five consecutive years from the date of registration, with no justifiable reasons for non-use.
Inditex claimed to be an interested party, as it had several well-known ZARA marks in Class 25 and had also applied for the registration of the mark ZARA as a Community trademark (CTM) in Classes 29 to 33. The County Court of Harju partially upheld Inditex’s claim, finding that it could be an interested party only in relation to those goods which were similar to those covered by the trademark application for ZARA.
Inditex appealed the decision of the County Court of Harju to the Circuit Court of Tallinn. The Circuit Court dismissed the appeal in its entirety, stating that, as the fields of activity of Inditex and FFAUF were completely different, the appellant could not be an interested party. Further, the appellant had not proven that the CTM application for ZARA had been put to genuine use and, therefore, the appellant could not have a legitimate interest in filing the claim.
Inditex filed a cassation appeal before the Supreme Court of Estonia, arguing that its fundamental right of recourse to the courts had been breached. According to Inditex, as the Trademark Act does not define who can be an ‘interested party’, then any party who finds that its rights or freedom has been affected or inhibited can be an interested party and can file a cancellation action due to non-use of a registered mark. Its legitimate interest derived from the fact that the trademark ZARA is well known and that it should be allowed to protect it from the risk of “dilution” or “gradual whittling away” through the dispersion of its identity and its hold upon the public mind. Further, the Circuit Court’s approach, according to which an interested party must prove the use of a trademark application, was not legitimate; such proof of use should not be a prerequisite for filing an action of cancellation.
The Supreme Court upheld the cassation appeal, finding that the interpretation of the Circuit Court had been too restrictive. The Supreme Court stated that any party that has filed an identical or similar trademark application for identical or similar goods or services should be considered as an interested party.
Anneli Kapp, Käosaar & Co, Tartu
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