Supreme Court precludes oral use of trademark

Estonia

The Supreme Court of Estonia has issued its decision in Eesti Raadio v OÜ Juturaadio (Case 3-2-1-110-02), clarifying whether, pursuant to Article 5(8) of the Trademark Act, visual reproduction of a registered trademark is necessary for infringement to occur.

The defendant, OÜ Juturaadio, runs a radio station that had been using the words 'Raadio Eesti' (Radio Estonia) in its broadcasts. The plaintiff, Eesti Raadio, a national broadcasting company and owner of the trademark EESTI RAADIO, sued for trademark infringement.

Both the court of first instance and the appellate court found for the defendant. First, they held that the terms 'Raadio Eesti' and 'Eesti Raadio' are sufficiently different when heard in broadcasts. Second, they held that the defendant had only used the phrase 'Raadio Eesti' orally. As such, a phrase confusingly similar to the plaintiff's EESTI RAADIO mark had not been 'reproduced' within the meaning of Article 5(8) of the Trademark Act. Article 5(8) provides that "the scope of legal protection of a registered trademark shall be based on a reproduction of the mark."

On appeal to the Supreme Court, the court ruled that the lower courts' interpretation of Article 5(8) was too narrow. The exclusive rights of a trademark owner include the right to prohibit the use of both reproductions and oral use of the mark. The case was sent back to the appellate court for review.

Mari Toomsoo, Käosaar & Co, Tartu

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