Update from the Finnish courts
In case MAO:505/14, the Finnish Market Court considered whether the Kappahl Sverige AB (Kappahl) international trademark ‘X L N T’ can be registered for clothing in Class 25 in Finland. The Finnish Patent and Registration Office (PRH) had denied Kappahl’s application due to lack of distinctiveness.
The court reasoned that ‘xlnt’ is short for ‘excellent’ and is commonly used as an abbreviation in SMS messages. It is also included in some English dictionaries. When evaluating the trademark’s distinctiveness, attention shall not be paid to the space between the letters X, L, N and T, but to the abbreviation xlnt itself. The fact that xlnt is lacking distinctiveness in the English language does not automatically mean that it cannot be distinctive in Finland—it depends on whether the average Finnish consumer understands the meaning of the English abbreviation.
According to a market survey conducted by the applicant, 59% of the respondents did not associate the word ‘xlnt’ with anything particular. Only 9% associated ‘xlnt’ with ‘excellent’ (in Finnish and/or English). The court found that Finnish consumers cannot be expected to understand the meaning of an English abbreviation listed in foreign dictionaries, especially since it is not used commonly. The literal meaning of trademark ‘X L N T’ is not generally known among Finnish consumers and is therefore distinctive. The court reversed the PRH’s decision.
‘Profilus’ is distinctive
In case MAO:507/14, the Market Court considered whether Osuuskunta Maitokolmio’s trademark ‘Profilus’ is confusingly similar to Valio Oy’s registered national and Community trademarks ‘Profeel’, ‘Gefilus’, ‘Kidius’ and ‘Evolus’, as well as whether Osuuskunta Maitokolmio is unfairly exploiting the reputation and distinctiveness of the well-known trademark ‘Gefilus’. The trademarks are partly registered in the same classes for various foodstuff and beverages.
The court did not consider ‘Profilus’ to be confusingly similar to either ‘Profeel’, ‘Gefilus’, ‘Kidius’ or ‘Evolus’. However, it also evaluated whether ‘Gefilus’, ‘Kidius’ and ‘Evolus’ could be considered a trademark family, in relation to which ‘Profilus’ would be considered confusingly similar. According to the Court of Justice of the EU, if a number of trademarks are considered to be part of a trademark family due to their common features, a third-party trademark is confusingly similar to that series of trademarks if consumers have mistaken it to be one of them (Il Ponte Finanziaria SpA v OHIM C-234/06 P). A trademark family is recognised, for example, by a distinctive element contained in all trademarks in the series, or by an identical prefix or suffix that is also part of the original trademark.
The Market Court found that since there are only three trademarks involved and their only common feature is the two last letters ‘us’, which is not a memorable part of the trademarks, they don’t constitute a trademark family. Also, although ‘Profilus’ does contain the same suffix ‘us’, it is not enough to make it confusingly similar to the claimant’s trademarks. Finally, since the claimant had not presented any evidence supporting its argument that ‘Gefilus’ is a well-known trademark, the court could not evaluate whether its reputation and distinctiveness has been unfairly exploited.
€16.5m damages for unfounded interim injunctions
The pharmaceutical company Pfizer lost a landmark case in Finland earlier this year as the Helsinki District Court decided in favour of competitor Ranbaxy in a dispute concerning cholesterol medicine Lipitor (case no L 10/6838, decision no 26401).
Pfizer’s Finnish patent for the active ingredient in Lipitor (atorvastatin calcium) was in force from February 1989 to February 2009. In 2003, Ranbaxy started exploring the possibility of entering the Finnish market with its own cholesterol medicine, containing the same active ingredient as Lipitor. However, due to successful interim injunctions applied for by Pfizer against Ranbaxy, Ranbaxy’s market entry did not succeed until 2009 when Pfizer’s patent expired.
After Pfizer’s patent had expired, it was declared invalid by the Helsinki Appeals Court in 2009, whereupon Ranbaxy filed a lawsuit against Pfizer in 2010, claiming damages for the loss caused by the unfounded interim injunctions.
The court decided in favour of Ranbaxy and ordered Pfizer to pay €16.5 million ($21.8 million) in damages with interest and Ranbaxy’s legal fees. When calculating the damages (on the basis of Ranbaxy’s estimated losses) the court took into consideration among other things the fact that the drug in question is very popular and successful and the likelihood of success of the first generic version on the market. Ranbaxy’s Lipitor copy is marketed in Finland by pharmaceutical company Orion, which now holds an 80% market share due to a drop in the original price by 90%. Pfizer has appealed against the decision.
Hanna Nylund is an associate at Procopé & Hornborg. She can be contacted at: hanna.nylund@procope.fi
Davide Battistelli is an associate at Procopé & Hornborg. He can be contacted at: davide.battistelli@procope.fi
