Patent Office decision reversed despite dissent

Swedish company Lantmännen Doggy AB has successfully appealed a decision of the Estonian Patent Office in which the latter had found the word mark DOGGY (International Registration 0951129) was merely descriptive in relation to “animal foodstuffs” in Class 31 of the Nice Classification (Decision 1253-o, April 13 2011).
Lantmännen applied for the registration of the word mark DOGGY in Estonia. The Patent Office considered that the mark was not distinctive, but merely descriptive, within the meaning of Sections 9(1)(2) and 9(1)(3) of the Estonian Trademark Act, as it immediately described the kind and intended purpose of the goods. 
Lantmännen pointed out that, since 1996, it had owned a registration in Estonia for DOGGY (and design) (Registration 20506) for “animal food” in Class 31. Lantmännen claimed that the meaning of the word ‘doggy’ was the same as in 1996 and, therefore, the change of position of the Patent Office was unjustified and unfair. The Patent Office had indicated the elements of the mark that were not protected in other decisions; however, it could be inferred that the word ‘doggy’ was protected. Further, Lantmännen argued that there was no evidence that the word ‘doggy’ was used in Estonia in relation to dog food or to designate a dog in the current language or in business practice.
The Patent Office argued that, if it refuses to register a word mark on the grounds of descriptiveness, no additional evidence showing the current usage of the word is required. Secondly, as every trademark application must be examined individually, the earlier registration was irrelevant. However, the refusal of the word mark DOGGY did not render the earlier registration null, as Lantmännen seemed to believe.  
The Board of Appeal reversed the decision of the Patent Office - even though one of the board’s members dissented. The board found that the Patent Office had not sufficiently explained why the word ‘doggy’ was descriptive of the goods in Class 31. The board also pointed out that, in the earlier registration for DOGGY (and design), the word ‘doggy’ was protected.
Kärt Laigu, Käosaar & Co, Tallinn

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