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IPONZ fee changes, Estonia new online trademark system, and Game of Thrones at INTA Annual Meeting: news digest

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.

Latest

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27 Apr 2021

Board of Appeal dismisses opposition in dispute between former parties to franchise agreement

This decision in opposition proceedings involving former parties to a franchise agreement sets a new precedent following the coming into force in 2019 of the Principles of Legal Regulation of the Industrial Property Act, which relate to proceedings before the Board of Appeal. Read more

29 Oct 2020

Board of Appeal confirms refusal of IT365 as being descriptive

The Board of Appeal has agreed with the Estonian Patent Office that the combination of the term ‘IT’ and the number 365 would be perceived as referring to IT services which are provided throughout the year. Read more

19 Dec 2019

Board of Appeal reorganisation and changes to trademark-related administrative proceedings: what you need to know

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

3 Sep 2019

Significant amendments to Estonian trademark legislation enter into force

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

Anti-Counterfeiting

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30 May 2007

Penal Code amendment stricter on counterfeiting

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.

Brand management

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27 Mar 2012

Court provides guidance on exhaustion of trademark rights

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.

17 Feb 2009

Second Supreme Court decision in STOLICHNAYA Case

The Supreme Court of Estonia has issued a second ruling in the case of Stol-I AS v Liviko AS, 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.

13 Jul 2007

Supreme Court clarifies licensee rights to infringement claims

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.

7 May 2003

Trademark transactions not final until recorded, rules court

In its decision in AS Paide Piimakombinaat v Patendiamet, 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.

Enforcement and Litigation

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29 Jan 2019

Draft Amendments to Trademarks Act and Principles of Legal Regulation of Industrial Property Act: key points highlighted

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

6 Nov 2018

Well-known healer’s name and alias protected to the benefit of his heirs

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

15 Jan 2018

Trademark case proves no PIK-NIK as court upholds cheese string mark

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 ‘Piknikupulgad’ was descriptive, lacked distinctive character and had become customary in the Estonian language.

2 Nov 2015

UK law firm Redd succeeds on appeal in infringement action against local law firm Red

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.

Government/Policy

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1 Jun 2012

IP laws to be harmonised and simplified

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.

Online

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11 Mar 2013

No criminal liability for trademark infringement when application is pending

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.

26 Sep 2011

Tallinn Airport cannot monopolise the word ‘airport’

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.

5 Sep 2011

Letters with diacritical signs now allowed in '.ee' domain names

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.

17 Mar 2011

Reorganisation of domain name register in its last phase

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.

Portfolio Management

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2 Oct 2018

Board of Appeal: no analogy between domain names/trade names and trademarks under Article 10(1)2

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

13 Apr 2018

'Skyr' found to be descriptive of dairy products; opposition against SKYR BALTAIS rejected

The Estonian Board of Appeal has found that the figurative marks SKYR and SKYR BALTAIS in Class 29 were not similar, as the word ‘Skyr’ has meaning for Estonian consumers.

14 Mar 2018

Blow for Starbucks in battle to enforce its logo: COFFEE HOUSE logo allowed to proceed to registration

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.

14 Mar 2017

Board of Appeal not convinced by father's argument that he sought to protect son's name as a trademark

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.

Trademark law

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10 Feb 2017

Owner of BARCLAYS in Classes 32 and 33 fails to prevent registration of mark containing the element 'Barclay' in Class 33

The Board of Appeal has dismissed an opposition by the owner of the mark BARCLAYS in Classes 32 and 33, against the registration of the mark THE LEGENDARY MINISTER OF WAR - BARCLAY in Class 33.

11 Feb 2016

GrillSeason succeeds on appeal following refusal of GRILLCUBE

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.

23 Nov 2015

Mark consisting of descriptive elements is not necessarily descriptive as a whole

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.

10 Jul 2015

Change in practice concerning registration of geographical names

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.

Twitter

17 Sep 2021

@WTR_Alerts RT @OWNR_TRADEMARK: Emma Raducanu, the brand: why trademark protection needs to be a priority for tennis superstar. Read https://t.co/Lzzg… Read more

17 Sep 2021

@WTR_Alerts European Union - Legal Update Alert: In a victory for Apple Inc, which sought to invalidate the mark E*MESSAGE, the… https://t.co/AlKBGbjzeU Read more

17 Sep 2021

@WTR_Alerts RT @RandyMo01933793: This feature of 3M's Colette Durst in the World Trademark Review is just as inspiring as it informative! #Proud3Mer #3… Read more

16 Sep 2021

@WTR_Alerts RT @LCLD_rgrey: LCLD Diversity Professional Jeremiah DeBerry, Partner & Director of D&I #LCLDMember @Mayer_Brown, shares the three key conc… Read more