OREANDA-NEWS. December 24, 2009. Sorainen Estonia office successfully represented Legendijuhtimise AS, a leading hotel and spa operator in the Baltic States, against a trademark infringement action. The opponent, having registered the trademark “City Spa” for services covering "education; providing of training; entertainment; sporting and cultural activities" brought an action against our client, who used the sign "GO CitySpa" for designating its spa services offered in Tallinn, reported the press-centre of Sorainen.

Our client filed a counter-claim to invalidate the opponent's trade mark registration due to its indistinctive and descriptive character. Upon considering the case, Harju County Court found - and later the appeal court confirmed - that the trademark “City Spa” registered by the opponent is descriptive and not distinctive. The mark informs customers that spa services are provided in a city. As a result, the opponent's trade mark registration was invalidated and their claim dismissed.

These court decisions follow the established case-law of the ECJ pursuant to which a trade mark consisting of a neologism composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive. Partner Carri Ginter notes that the decision will also impact future proceedings as in similar disputes Estonian courts have quite often relied on opinions of specialists (usually trademark attorneys) submitted by the parties as evidence. But now for the first time in Estonia the appeal court has confirmed that only the court itself can take the position whether or not grounds exist for excluding legal protection of trade mark, by analysing all the facts and circumstances of the case, so that corresponding third party opinions cannot be considered as evidence.

The case was handled by partner Carri Ginter and trade mark attorney Indrek Eelmets.