Trademark update from the new IP court
The Finnish Market Court started to operate as the new IP court on September 1, 2013. It has jurisdiction in all civil IP matters including, for instance, applications relating to IP rights and appeals against decisions by the National Board of Patents and Registration (NBPR) regarding patents, trademarks and designs.
Following the transfer of civil IP matters to the Market Court, the Board of Appeals of the NBPR ceased to operate on January 1, 2014 and its cases were transferred to the Market Court. After a rather quiet autumn, the court has recently handed down a number of judgments in IP cases, the vast majority being appeals against NBPR trademark decisions. An overview of some of the key rulings follows.
Literal v. contextual meaning of words in trademarks
In some cases, the court’s approach has been less strict than that of the NBPR. For example, in case MAO:516/13 the court found that the trademark ‘Green Smoke’ is capable of being registered for ‘electronic cigarettes’ in Class 34, while the NBPR argued that both parts of the trademark lack distinctiveness. The cigarettes were not coloured green, but the NBPR reasoned that ‘Green Smoke’ indicates that the cigarettes are ecological or made from ecological material.
The Market Court on the other hand found that, although the first part of the trademark, ‘Green’, could indicate for example environmental friendliness and be seen as descriptive of the nature of the product, such reasoning is too farfetched in this case. ‘Smoke’ for cigarettes as such was found descriptive, but not the combination of the words ‘Green’ and ‘Smoke’, which can therefore be registered.
In case MAO:470/13 the court considered whether the trademark ‘Peanuts Envy’ is confusingly similar to the trademark ‘Envy’, both registered for similar foodstuffs in Class 30. The appellant argued that the English word ‘Peanuts’ cannot as such be descriptive of a foodstuff in Class 30 since it does not merely indicate actual peanuts, but also something simple, basic and insignificant. The court found however, that the multiple meanings of the word ‘Peanuts’ is irrelevant as in this case the term is descriptive of the goods in question.
‘Envy’ was not found descriptive of foodstuffs but to be the dominant part of the trademark and the court ruled in line with the NBPR that ‘Peanuts Envy’ and ‘Envy’ are confusingly similar.
Top-level domain did not contribute to distinctiveness
In case MAO:517/13 the Market Court agreed with the NBPR that ‘Rentalcars.com’ cannot be registered for services related to car rentals in Classes 36, 38 and 39. The first part, ‘Rentalcars’, is descriptive in respect of the mentioned services. The second part ‘.com’ is not in itself distinctive but merely indicates a generic top-level domain. Combined, ‘Rentalcars.com’ communicates that the services can be accessed through the Internet, but it fails the distinctiveness test.
Guidelines on confusing similarity
The Market Court has recently ruled in four trademark cases regarding the Finnish company Oy Hartwall Ab and its competitor Olvi Oyj in Olvi’s favour. In one of the cases, MAO:46/14, Hartwall—the owner of the beer trademark ‘Lapin Kulta’ (in English ‘Lapland’s gold’)—argued that ‘Lapin Kulta’ and Olvi’s trademark ‘Olvi Kulta’ (in English ‘Olvi gold’) are confusingly similar.
"The court found however, that the multiple meanings of the word ‘Peanuts’ is irrelevant as in this case the term is descriptive of the goods in question."
The trademarks are registered for similar products (beverages) and the court found that ‘Kulta’ (gold) can be found descriptive for the colour and quality of such products. The court argued that Finnish consumers consider the trademark ‘Lapin Kulta’ evocative and as a whole—not as two separate words.
In Olvi’s trademark, on the other hand, the court found that the word ‘Kulta’ is merely descriptive of the products since consumers connect the first (and dominant) part of the trademark ‘Olvi’ to the name of the brewery. Looking at the trademark as a whole doesn’t change this. Furthermore, the court reasoned that ‘Kulta’ is commonly used in trademarks for such beverage products and concluded that consumers will not be mistaken that there is a connection between the two breweries just because they both contain the word ‘Kulta’. Based on the above, the trademarks were found not to be confusingly similar.
Hanna Nylund is an associate at Procopé & Hornborg. She can be reached at: hanna.nylund@procope.fi
Davide Battistelli is an associate at Procopé & Hornborg. He can be reached at:
davide.battistelli@procope.fi
