Attorneys Triin Toomemets and Carri Ginter successfully represented Gulf International Lubricants Ltd. before the Supreme Court in a claim against an unofficial reseller of “Gulf” goods in Estonia.

      In a landmark judgment of 30 March 2006 the Supreme Court ruled that the lower courts should have interpreted Estonian law in harmony with European legislation.

      According to correct interpretation of Estonian law it is illegal to use another's trademark in a manner that creates false impression of a special connection between a reseller and the trademark proprietor.

      The court also stated that unauthorized use of a trademark in another person’s business name can infringe the rights of the trademark proprietor. If the business name is misleading, then it is possible to prohibit its use regardless of the areas of activity of the respondent undertaking. The court can thus prohibit use of the business name and impose penalties on a respondent violating the prohibition.

      For the first time in local legal practice, the court recognized that a trademark proprietor is entitled to prohibit the use of its trademark in a domain name of a third person. The court pointed out that mere registration of the domain name provides sufficient grounds for turning to the court because of the trademark owner’s inability to use the same website address. In conclusion, the case stands as a landmark as it demonstrates that, on top of resolving a number of unclear legal issues, the shortcomings of domestic law and practice can be overcome by using principles set forth in relevant EU legal acts and recognized by the ECJ.

      Additional information:

      Triin Toomemets

      e-mail: triin.toomemets@sorainen.ee