Well-known trademarks in Estonia
The WIPO (The World Intellectual Property Organization) has the Recommendation for the Protection of Well-Known Marks that is ’soft-law’, meaning that it is not a binding legal instrument. Majority of the Member States of the EU are not providing any specific provisions concerning the procedure of determining whether a trademark is well-known. However three states: Estonia, Bulgaria and Romania have provided in their national trademark laws detailed provisions of the criteria for determining whether a trademark is well-known or not. These criteria remind the ones established in the WIPO recommendation and they are to be found from the Estonian Trade Marks Act (hereinafter, TMA) in Article 7.
Moreover the unregistered trademarks for unrelated goods and services is given also in the Estonian law, particularly in Art. 10(3) of the Estonian TMA. The article excludes the legal protection of a later trade mark, if the later trademark is identical or similar to a trademark that has been registered earlier and which:
- (1) has been filed for registration or to a trade mark
- (2) is known to the majority of the Estonian population and
- (3) has been granted legal protection for different kinds of goods or services if the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The Relevant cases
Bauhaus case (2012)
This was a case handled by the Estonian District Court, concerning the trademark ’BAUHOF’ of the defendant Bauhof Group AS, which is the biggest retail business in construction materials and gardening goods in Estonia and its dispute with the applicant Demp B.V. who does similar business and owns the trademark ’BAUHAUS’. The dispute was concerning the issue that is the trademark ’BAUHAUS’ and ’BAUHOF’ confusingly similar or to be associated with each other. In the case it was mentioned that the likelihood of confusion is greater the stronger the distinctive character of the earlier mark is, in other words the higher the reputation and the more well-known the earlier mark is. Thus the reputation is a factor to consider in assessing whether the signs or the similarity between the goods and services is sufficient to give rise to a likelihood of confusion. However because intellectual property is subject to the principle of territoriality, the use of the mark was linked to the territory of Estonia, which has a distinctive character or the reputation of the earlier mark must be linked with Estonia. The evidence submitted by the applicant- newspaper articles - were related to brand image abroad and thus the applicant did not prove that the earlier mark is well-known in Estonia under the criteria of Art 7 of TMA. In addition based on the opinion of the court that there was no likelihood of confusion between the marks in question, there was no need to resolve the question of whether the trademark is well-known under Art 7(1) of the TMA as that is only associated with the law enforcement or appeal procedures concerning the legal protection of the trademark.
Superalko case (2012)
Moreover, the other case concerning well-known trademarks is the ’Superalko’ case (2012). In the case the applicant’s trademark ’SUPERALKO' and the defendant’s trademark ’VIINARANNASTA’ which both have different owners who are involved in the similar business - sale of alcoholic beverages. It was proven by the applicant that the defendant had put advertisement in its facilities that was misleading the consumers to think the defendant’s store is Superalko-store. According to the Trademark law, the idea of the trademark is to work as a sign used to distinguish goods or services of one person from another person of the same type of goods or services. Thus, the main task of the trademark proprietor is to distinguish products or services from those of the competitor’s. In the case it was thus considered that the defendant misled the customers and was breaching the applicants right of prohibiting the third parties from using the protected identical marks to the trademark (also the well-known trademarks) in their business activities and considering the fact that the possibility that the consumers may think the trademarks as well as the advertisements are unmistakably same. It was considered in the case that the defendant was interpreting the meaning of well-known trademark and the clauses from TMA, according to which the plaintiffs have made the appeal, wrongly.
Vene juust case (2012)
Another case regarding the well-known trademarks is the ’Vene juust’ or in English ’the Russian cheese’ case (2012). The parties in the court proceedings were the applicant and the owner of the trademark ’VENE JUUST’Ago Teder and the defendant E-Piim which both used words ’vene juust’ in their cheese products. However the Court of Appeal’s decision was that that ’VENE JUUST’ is not the applicant's well-known trademark. These are different manufacturers of the same type of cheese (and the characteristics or method of production), showing a sign which had become customary. The phrase ’vene juust’ does not allow for the identification of cheese originating from any one particular company, to the exclusion of other manufacturers or distributors. There is therefore no indication ’vene juust’ has acquired sufficient distinctive character and thus the words ’vene juust’ may be used by anyone for cheese. Nevertheless, the design of the trademarks or package labels must not be similar to the trademarks registered earlier.
Zara case (2015)
A complex dispute regarding well-known trademarks, is the very recent case of ’Zara’ that was handled before the Estonian Supreme Court (2015). The dispute took place between the applicant Industria de Diseño Textil, S.A. (Inditex) that is a garment manufacturer and the defendant FFAUF S.A. that is the owner of trademark ’PASTA ZARA’ over the trademark ’ZARA’. At first it was found in the case that the garment manufacturer does not prove that the defendant used the trademark ’ZARA’ for food production or intended to do so. Thus, it was not considered to be an interested party according to Art 53(1) of the TMA. However the Supreme Court considered that this specific provision was misinterpreted by the District Court and considered that the applicant can be considered as an interested person under the Art 53(1) and that the applicant is also relying on the fact that its mark is well-known in the apparel industry and the other parties using the trademark may weaken its specific mark. Therefore, the case was sent to the District Court for reconsideration.
Sergio Rossi case (2009)
To mention one more case on the well-known trademarks in Estonia, there was the dispute between the owners of the trademarks ’SERGIO ROSSI’ that stands for leather and imitation leather goods and ’GINO ROSSI’ that is the trademark for leather shoes. The appellant argued that the trademark gino rossi + shape and Sergio Rossi are confusingly similar and thus violating the TMA § 10 section 1 subsection 2. It was decided in the case that both the trademarks have clearly distinguishing characteristics in them that shall not be overlooked. The only common element is the word ’Rossi’, but that is not the dominant element of the later mark. It was considered that the differences are more important than the similarities and the similarity in general is low. It was also pointed out in the case that Sergio Rossi as a trademark is well-known and as the European Court of Justice has previously pointed out, the more distinctive the earlier mark is, the greater the likelihood of confusion between this and the later mark. However it was estimated in the case that there was no evidence to support the argument that the mark ’SERGIO ROSSI’ had become well-known under the meaning of Article 7 section 3. This was due to the reasons that first, the advertisements from the Vogue and ELLE magazines that the appellant used as evidence were published in the November and December 2006 and then again the contested trade mark application for the submission and publication date to considerably later time. Second, the appellant’s evidence cannot be ruled out that the trade mark may be known, for instance in Italy, but this cannot be automatically assumed to be the situation in the territory of Estonia. Hence, it was considered in the case that the appeal to mark ’SERGIO ROSSI has not acquired the reputation in Estonia, which would be attributed to the greater distinctiveness of appellant’s brand. The appellant was found to not have explained nor demonstrated the extent of the reputation and distinctiveness of the trade mark in Italy and elsewhere in the world.
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