Pending national registration overpowers international mark extension

Estonia

In Balkanpharma Troyan AD v Almirall-Prodesfarma SA (Case 662-o), the Estonian Board of Appeal has reversed a Trademark and Patent Office (TPO) decision allowing the defendant to extend its international registration for ALMAGEL to cover Estonia.

Almirall-Prodesfarma, a Spanish company, applied to extend its ALMAGEL international registration in Class 5 of the Nice Classification to cover Estonia. The TPO allowed registration.

The registration was opposed by Bulgarian companies Balkanpharma Troyan AD and Balkanpharma Dupnitsa AD, both part of the Balkanpharma Group. They claimed that although their application to register an identical national mark was still pending, their mark was well known in Estonia and required protection pursuant to Article 6bis of the Paris Convention for the Protection of Industrial Property.

The Bulgarian companies produced the following evidence to prove the well-known status of their mark:

  • Copies of re-registration certificates for their ALMAGEL-marked drugs issued by the Soviet Union's Health Care Ministry in 1973.

  • A letter from the Estonian Pharmacists Association confirming that the ALMAGEL mark is well known and has been used in Estonia since 1980.

  • Sales figures predating Almirall-Prodesfarma's international extension, indicating sales of ALMAGEL-marked pharmaceuticals in Estonia.

The Board of Appeal upheld the opposition and reversed the TPO's decision. It found that the Bulgarian companies' identical ALMAGEL mark was well known in Estonia at the time of Almirall-Prodesfarma's application to extend its international registration.

Urmas Kernu, AAA Legal Services, Tallinn

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