Board of Appeal rules 'X-tra' is distinctive in Estonia

Estonia

The Estonian Board of Appeal has ruled (Case 561/2003) that 'X-tra' is sufficiently distinctive to be registered as a trademark, overruling a decision by the Patent and Trademark Office (PTO) to reject Henkel KgaA's application.

Henkel, a German company, applied to register 'X-tra' in Classes 1, 2, 3 and 5 of the Nice Classification. The PTO rejected the application on the basis that 'X-tra' is not distinctive because it is not a considerably altered version of 'extra', and 'extra' is used worldwide to designate the quality of goods. Henkel appealed.

The Board of Appeal reversed the PTO's decision, finding that:

  • the distinctiveness of a sign must be assessed with due regard to the relevant situation in Estonia alone;

  • as 'X-tra' is not a word or an abbreviation of 'extra' in the Estonian language, it is meaningless to at least 80% of the population which does not speak English; and

  • as the X-TRA mark is registered without any limitations in Germany, it must be registered in Estonia as well, in accordance with Article 6quinquies of the Paris Convention for the Protection of Industrial Property.

Urmas Kernu, AAA Legal Services, Tallinn

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