Trademark transactions not final until recorded, rules court

In its decision in AS Paide Piimakombinaat v Patendiamet (Case 3-60/2003), the Administrative Court of Tallinn has ruled that the purchaser (assignee) of a trademark becomes the owner of that mark only when the transaction purporting to transfer ownership is recorded in the Trademark Register.

In December 2000 AS Ühinenud Meiereid sold its trademark MEIERI to AS Paide Piimakombinaat. Six months later, Paide applied to have the transaction recorded in the Trademark Register. The Patent Office rejected the application on the grounds that an injunction had been issued against Ühinenud prohibiting all transactions involving the company's marks. Several months later, the injunction was annulled prompting Paide to file another application to have the transaction recorded. However, before the application was received, another court had issued an injunction specifically prohibiting transactions involving Ühinenud's MEIERI mark. Accordingly, the Patent Office rejected Paide's application for a second time.

Ühinenud and Paide appealed to the Administrative Court of Tallinn, requesting that the transfer of ownership be recorded in the Trademark Register since Paide had become the new owner of the MEIERI mark in December 2000.

The court in Tallinn refused the parties' request, stating that, pursuant to Article 22 of the Trademark Act, the owner of a trademark is the natural or legal person whose name is recorded in the Trademark Register. Thus, until such time as the Patent Office accepts Paide's application, Ühinenud is the true owner of the MEIERI mark.

Sven Pääsukene, Käosaar & Co, Tartu