Well-known marks have same protection as registered marks

In KR Kaubanduse AS v Rautakesko AS (Case 3-2-1-168-04, February 23 2005), the Supreme Court of Estonia has overturned a lower court's reasoning and ruled that, pursuant to both the previous and current Trademark Acts, well-known but unregistered marks have the same level of protection as a national registration.

KR Kaubanduse AS filed an action against Rautakesko AS, claiming that Rautakesko's use of the mark K-RAUTA infringed its rights in the registered trademark K-RAUA and design. In response, Rautakesko argued that its unregistered mark was well known in Estonia, within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property. It stated that its holding company has been using the K-RAUTA mark in Finland since 1977 and thus KR Kaubanduse's K-RAUA mark was, in fact, infringing its rights.

The City Court of Tallinn upheld KR Kaubanduse's claim. It stated that the question of whether a defendant's unregistered trademark was well known before the claimant registered its marks in Estonia was not important. The court was of the opinion that the owner of a well-known but unregistered mark does not have the same rights as the owner of a national registration. The court stated that the scope of legal protection for a trademark is regulated by national legislation and the Estonian Trademark Act in force until May 1 2004 did not confer protection on well-known marks. Rautakesko appealed to the District Court of Tallinn but the appeal was dismissed.

On further appeal, the Supreme Court of Estonia overturned some of the findings of the district court. It held that the Paris Convention provides well-known trademarks with the same level of protection as a national registration. The court also declared that both the previous and current Trademark Acts offer protection to well-known marks. However, it explained that if Rautakesko's trademark was well known before KR Kaubanduse's trademark was registered, Rautakesko had the right to contest the validity of the registration within a set period, and it would first need to pursue this course of action before a declaration of infringement of its K-RAUTA mark could be made. The Supreme Court clarified that, as long as KR Kaubanduse's trademark remained registered, Rautakesko's use of K-RAUTA would be considered an infringement of KR Kaubanduse's mark, even if K-RAUTA was well known before KR Kaubanduse registered its mark in Estonia.

Accordingly, the Supreme Court annulled the earlier decisions on the grounds of procedural error.

Sven Pääsukene, Käosaar & Co, Tartu