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Finland: When the numbers don’t count

01-10-2015

Hanna Nylund

In case MAO:491/15 the Finnish Market Court considered whether Abloy can register ‘12’ as a trademark for metallic door handles in class 12 and non-metallic door handles in class 20 in Finland.

In case MAO:492/15 on the other hand the court considered whether KappAhl Sverige’s international trademark ‘1953’ can be registered in classes 18, 25 and 35 in Finland for a range of goods including clothing, footwear, headgear, bags, etc, and retail services concerning such goods.

The Finnish Patent and Registration Office (PRH) denied both applications due to lack of distinctiveness, saying the signs consist of numbers only.

According to Abloy, the sign ‘12’ constitutes an item number indicating the manufacturer of the door handle, but PRH argued that the sign can be understood as an indication of the quantity or price of the product and is therefore lacking distinctiveness.

As for sign ‘1953’, PRH claimed that it is conceived as a date, indicating when KappAhl was founded or when the production of the goods started. KappAhl argued that such an argument is not a valid reason for rejecting the trademark application, and that the sign is not descriptive in relation to the goods and services covered by the application.

In both cases, the court referred to the Court of Justice of the European Union’s (CJEU) decision in Agencja Wydawnicza Technopol v OHIM, concerning the application for registration of the sign ‘1000’ as a Community trademark in class 16. According to the case, the fact that a sign consists of numbers alone is not an obstacle for registration, nor is the fact that a sign comprises numbers with no graphic modifications (ie, lacking a creative/artistic styling).

However, when addressing the matter of descriptiveness, the CJEU stated that it is not necessary for a sign to be used in a descriptive way at the time of the trademark application—it is sufficient that the sign could be used for such purposes. Moreover, signs that consist of numbers alone may designate quantity, for example. That could constitute a valid ground for refusal of a trademark application if it is reasonable to believe that (according to the relevant public) the quantity indicated by such numbers characterises the goods or services covered by the trademark application. 

"The court did not find it realistic that the relevant public would reasonably believe that the goods were manufactured in 1953."

The market court reasoned that when goods are sold in packs, 12 is a common quantity. Door handles could well be sold in such packs. Moreover, the price of a door handle could realistically be €12 ($14). Based on the CJEU court practice above it is not relevant whether the door handles are actually sold in packs of 12, or whether the price of a door handle is €12. The court found that the number 12 characterises the quantity and price of door handles and is therefore descriptive and cannot be registered. The decision has been appealed against.

As for the sign ‘1953’, the court considered it to be perceived as a date, but that is not a ground for refusal. As indicated by PRH, 1953 could be the year when KappAhl was founded, or when the production of the goods in question started, but such facts do not characterise the goods/services covered by the application. The court did not find it realistic that the relevant public would reasonably believe that the goods were manufactured in 1953, and established that the international trademark ‘1953’ is not descriptive and can be registered (at the time of writing, the decision is not yet final).

(It should be noted that one of the three judges disagreed with the reasoning, stating that dates are commonly used on clothing [eg, as a figurative element on a shirt] and as a consequence, Finnish consumers will not perceive the sign as a trademark for KappAhl’s goods and services.)

Registering a sign consisting of numbers alone is possible, but choosing the right number is key. The decision is not final yet, but based on the market court’s reasoning it seems Abloy would have benefited from a higher number, as €12 could be a realistic price for a door handle, and door handles could be sold in packs of a dozen. KappAhl on the other hand might have had a more difficult case to prove should it have chosen say, 2015, as that could be a realistic production year of its products.

Hanna Nylund is an associate at Procopé & Hornborg. She can be contacted at: hanna.nylund@procope.fi

Brand management, KappAhl Sverige AB, KappAhl Sverige, CJEU, OHIM, trademark

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