In our latest round-up, we look at Stella McCartney prevailing in a trademark dispute, Lego being named the United Kingdom’s favourite brand, the Mexican Industrial Property Office announcing a new electronic notification service, and much more.
Following the implementation of the Trademark Directive in Estonia, the Board of Appeal has been reorganised, and substantial changes have been made to the opposition procedure and the board’s scope of jurisdiction. Read more
On 1 April 2019 amendments to the Estonian Trademark Act and the related secondary legislation entered into force, which have introduced important changes and simplified the trademark registration procedure in Estonia. Read more
The Estonian Patent Office Board of Appeal has dismissed an opposition against the registration of the figurative mark CRAFTSMAN TOOLS in Classes 7, 8 and 35 based on the earlier word mark CRAFTSMAN in Classes 7, 8 and 9. Among other things, the board found that the opponent had no legitimate interest to be a party in the opposition procedure. Read more
The Estonian IP landscape is set to undergo major changes this year, as the draft Amendments to the Trademarks Act and Principles of Legal Regulation of Industrial Property Act are currently before Parliament for their first reading. Read more
The Estonian Penal Code has been amended to make it a criminal offence to sell counterfeit goods in all cases - even if the seller is a first time offender or the sale involves a small quantity of goods. The provision, in force since March 15 2007, complies with Article 3 of the proposed IP Criminal Enforcement Directive.
In an infringement action filed by Spirits International BV, the owner of the trademarks STOLICHNAYA, MOSKOVSKAYA and RUSSKAYA, against a former sub-licensee of these marks in Estonia, the Harju County has ruled that the transfer of ownership of goods as a security for a loan did not amount to putting the goods on the market.
The Supreme Court of Estonia has issued a second ruling in the case of <i>Stol-I AS v Liviko AS</i>, which involved the unauthorized use of the STOLICHNAYA mark. Among other things, the court held that a trademark licensee can claim damages for infringement for the period during which it was not yet established as a legal person and the licensing agreement had not been concluded.
In a case involving the trademark STOLICHNAYA, the Supreme Court of Estonia has clarified what rights a trademark licensee has in relation to trademark infringement claims. The court held that only the trademark owner entered into the Trademark Register at the time of filing a claim has the right to make a claim of trademark infringement.
In its decision in <i>AS Paide Piimakombinaat v Patendiamet</i>, the Administrative Court of Tallinn has ruled that the purchaser of a trademark becomes the owner of that mark only when the transaction purporting to transfer ownership is recorded in the Trademark Register.
The Board of Appeal of Estonia has upheld oppositions filed by the heirs of well-known healer and writer Aleksander Heintalu (also known as Vigala Sass) against the registration of ALEKSANDER HEINTALU and VIGALA SASS. Read more
The County Court of Harju has upheld a decision by the board of appeal that there was no likelihood of confusion between the figurative mark HIIRTE JUUSTU PIKNIKUPULGAD and the earlier PIK-NIK trademarks. It held that the marks as a whole were dissimilar visually, phonetically and semantically, and that the word combination ‘<I>Piknikupulgad</I>’ was descriptive, lacked distinctive character and had become customary in the Estonian language.
The Tallinn District Court has overturned a lower court decision finding that use of the mark RED by Estonian law firm Advokaadibüroo Red OÜ did not infringe the trademark rights of UK law firm Redd Solicitors. Among other things, the Tallinn District Court held that there was a risk that clients might believe that Redd and Red are economically related, even though they operate in different jurisdictions.
The County Court of Harju has dismissed an action by ABC Kliima OÜ alleging that use of the figurative mark KODUKLIIMA by Kodukliima Grupp OÜ infringed its exclusive rights in the figurative mark ABC KODUKLIIMA SALONG. The court held that, before filing a court action, ABC Kliima should have followed the pre-court procedure at the Board of Appeal.
The Ministry of Justice has initiated a project investigating the possibility of codifying the Estonian IP laws. This is the next step in the reform whereby all IP matters were consolidated under the management of the Ministry of Justice. A codification team has been set up with the aim of creating draft laws by 2014.
The Tallinn District court has ruled that criminal sanctions for trademark infringement cannot be applied in cases where the infringement occurred when the trademark application was still pending. The court referred to the explanatory memorandum of the Trademark Act, which clearly indicates that criminal liability should arise only after the registration of the trademark.
The Harju County Court has dismissed an action filed by Tallinn Airport requesting the transfer of the domain name ‘lennujaam.ee’ (‘airport.ee’). M&A AS, the owner of the domain name, argued that Tallinn Airport had no right to prohibit third parties from using the word ‘airport’ due to its descriptive character.
As of June 13 2011, anyone interested in registering '.ee' domain names containing letters with diacritical signs can do so on a first-come, first-served basis. There is no extra fee for registering such domain names, only the usual domain registration fee set by the accredited registrar.
The Estonian Internet Foundation, the registry for '.ee' domain names, is currently implementing the last stage of the reorganisation of the register, which involves the re-registration of active domain names under the new registration rules. The domain names that were not re-registered became inactive on February 6 2011. However, owners can still re-register these domain names until April 6 2011.
The Estonian Board of Appeal has dismissed an opposition against the registration of the mark KVARTAL based on the earlier trade name Kvartal OÜ and the domain names ‘kvartal.ee’ and ‘kvartal.eu’. Read more
The Estonian Board of Appeal has rejected Starbucks’s opposition against the registration of a figurative mark consisting of a green, round logo and the words ‘coffee house’ for coffee-related goods and services.
The Board of Appeal has upheld dairy company AS TERE’s opposition against the registration of the mark ATS for “milk and dairy products” and “ice cream”, and upheld the opposition by Ats Teder, a minor, against AS TERE’s application for the mark TERE ATS for non-dairy products. Among other things, the board found that Ats Teder’s father must have been aware of AS TERE’s use of its mark for dairy products before he filed the application for the ATS mark in his son’s name.
The Board of Appeal has overturned an Estonian Patent Office decision finding that the mark GRILLCUBE was descriptive and lacked distinctive character. The Board of Appeal found that for a refusal, the meaning of the mark should describe some essential characteristics of the goods.
The Board of Appeal has upheld Rehvid 24 OÜ’s appeal against the decision of the Patent Office not to register the trademark REHVID24 (meaning ‘tyres24’ in English) on the ground that it was descriptive. Among other things, the board held that, if a mark consists of a combination of elements, the fact that each component in isolation is descriptive does not mean that the trademark as a whole is descriptive.
The Harju County Court has overturned a decision of the Appeal Board refusing to register the mark VERGI for beverages on the ground the relevant public could believe that the goods originated from Vergi - a small fishing village in northern Estonia - or were related to Vergi in other ways. Following the decision, the Patent Office has accepted to register the names of certain small villages.