KÄOSAAR successfully defended the registration of Estonian trademark “EESTI 200”
The Board of Appeals dismissed an opposition against the registration of the word mark “EESTI 200”, filed by an Estonian NGO and a private individual based on the earlier trademark “EESTI 200” and alleged well-known trademark “EESTI 200” (Decision No. 1828-o, 18 March 2022).
Background
On 3 May 2018 Estonian NGO Eesti 200 applied to register the word mark EESTI 200 in classes 16, 25, 35, and 41 (Application No. M201800462).
The application was opposed before the Board of Appeal based on the earlier figurative trademark EESTI 200 in class 41, and alleged well-known word mark EESTI 200 in classes 12, 35, and 41.
The opponents argued that the registration of the contested trademark was similar to the earlier trademarks and would take unfair advantage of the distinctive character or the repute of the earlier trademarks. The level of similarity was allegedly supported by the fact that some members of the Estonian Parliament had formed a support group for the NGO Eesti Kultuur 200.
The opponents also argued that since as of 3 May 2018, they had used the mark EESTI 200 for three years regarding cultural and social activities, organising public events, and publishing, the classification of the contested trademark is identical to the goods and services of the earlier trademarks.
The applicant disagreed that the earlier sign EESTI 200 could be considered a well-known trademark since the opponents had not presented sufficient proof. The applicant also argued that based on the proof that the opponents had presented, it was not possible to claim that they had used the word mark as a trademark, i.e., as an indication of origin for economical purposes. The applicant was also of the opinion that the presented proof was not enough to prove which of the opponents had used the trademark and pointed out that the public should connect the trademark EESTI 200 to both opponents equally.
As a response to the opponents’ statement that their wordmark EESTI 200 was as of 3 May 2018 well-know and earlier, the applicant pointed out that since the opponents state the same date as applicant’s trademark application date, the rights are created on the same date and therefor the rights have no priority in relation to each other.
The Board’s decision
Although the Board of Appeals agreed with the opponent that the earlier registered trademark EESTI 200 and the contested trademark were in some parts similar, it considered that since the lists of goods and services were dissimilar, there was no likelihood of confusion on the part of the consumers. Even though the opponents had tried to present evidence regarding the use of the trademark, it was not proven that the earlier registered trademark EESTI 200 had a reputation that the use of the applicant’s trademark could take advantage of or be detrimental to.
The Board also agreed with the applicant that the use of wordmark EESTI 200 for economical purposes was not proven and therefor it could not be considered a well-known trademark. As a result of the proceedings, the Board of Appeals rejected the opposition and the registration of the applicant’s trademark EESTI 200 remained in force.
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