UK law firm Redd succeeds on appeal in infringement action against local law firm Red
The Tallinn District Court has upheld an appeal (Case 2-14-51888, July 5 2015) filed by Redd Solicitors LLP against a February 18 2015 decision of the Harju County Court regarding the use of RED by Estonian law firm Advokaadibüroo Red OÜ as part of its trademark, company name and domain name.
On March 30 2011 newly established law firm Advokaadibüroo Red filed a Community trademark application for RED LEGAL. The application was opposed by UK law firm Redd, which owns a trademark registration for REDD in respect of legal services.
The application for RED LEGAL was withdrawn as a result, but Redd decided to enforce its trademark rights to their full extent and took action against the use of RED as part of the trademark, company name and domain name (‘redlegal.ee’) of the Estonian law firm.
Surprisingly, the first instance court found there was no trademark infringement and that the additional letter ‘D’ in REDD was sufficient to distinguish it from RED. The court also took into account the fact that the two law firms covered different legal sectors.
Redd appealed to the Tallinn District Court, which is one of the regional second-instance appeal courts in Estonia. The district court overturned the Harju County Court’s decision and ruled that the latter had wrongly applied the law.
The court found that the trademarks REDD and RED were visually similar due to the common first three letters; this similarity could not be negated by the additional letter ‘D’ in REDD. The court also found that Estonian consumers would pronounce both marks in an identical manner. From a semantic point of view, the court emphasised that English is commonly spoken in Estonia and, therefore, the meaning of ‘red’ is known by a considerable part of the population. The court also found that REDD would be associated with the meaning of the word ‘red’ by Estonian consumers.
The court further highlighted the international nature of law firms, as firms often establish offices in other countries and clients use the services of law firms located outside their home country. Therefore, there was also a risk of indirect confusion in that clients would believe that Redd and Red are economically related, even though they operate in different jurisdictions.
However, the court said that it would not issue a broad injunction to prohibit the use of the word ‘red’ in combination with other words or as part of another word, as this would be too broad and all potential uses might not infringe the plaintiff’s trademark rights.
The court also found that the domain name ‘redlegal.ee’ and company name Advokaadibüroo Red OÜ infringed the REDD mark. Therefore, it ordered the defendant to cancel the domain name registration and amend the company’s articles of association so that the company name would no longer contain the word ‘red’. The defendant had to submit the relevant requests to the domain name and company registries within three weeks following the enforcement of the court decision.
Finally, the court ordered Red to reimburse 90% of Redd’s legal fees; the 10% deduction was due to the fact that the court did not issue a broad injunction prohibiting any use of ‘red’, on its own or in combination with other words. According to the court’s rules, there are separate procedures for determining the final amount of the legal fees to be reimbursed, based on a court evaluation of the reasonable hourly rate, time spent on the case and staffing costs.
The court decision took effect on October 12 2015 and must now enforced by Red.
Almar Sehver, AAA Legal Services, Tallinn
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