Puma prevailed over Ruma in a trademark dispute

Puma won one interesting trademark opposition in Finland. The case concerns a trademark application for RUMA in classes 25 and 28 (clothes and toys among others).

Against this application an opposition was filed by Puma based on early registered trademark for PUMA in the same classes.

The Finish Patent and Registration Office dismissed the opposition considering the two marks as not confusingly similar. The reasons were the different first leters and the conceptual dissimilarity.

The decision was appealed. The Court upheld it after which the decision was applied again.

The Supreme Administrative Court overturned the decision finding both marks visually similar despite the first letters that are different. According to the Court  the letters P and R are similar in appearance.

The Court questioned whether consumers would understand directly the meaning of PUMA as a word. Even if this was the case PUMA was distinctive for all the goods in classes 25 and 28. What’s more because of its reputation it has even stronger distinctive character. The interesting part here was the fact that the Court concluded on the existence of PUMA’s trademark reputation without submitted evidence in the proceeding.

According to the Court, when it comes to clothes they are often sold in stores where consumers choose between them mostly based on their visual aspects and not so based on conceptual or phonetic characteristics.

Taking all of this, the Court considered that both marks are similar enough.

Source: Johanna Säteri, Jenni Ihalainen – Berggren Oy. 

Breaking news: storage of goods by individuals can constitute a trademark use in the EU

The European Court has ruled in the case C‑772/18 which concerns the following background:

 On 4 April 2011 B, a natural person resident in Finland, received from China a consignment of 150 ball bearings weighing in total 710 kg, used as spare parts in transmission mechanisms, generators and engines and in the construction of bridges and tramways. On those bearings there was affixed a sign corresponding to the international word mark INA, of which A is the proprietor, covering, inter alia, goods classed as ‘bearings’.

Once customs clearance was completed in B’s name, on 12 April 2011 B withdrew the consignment from the customs warehouse at the airport of Helsinki-Vantaa (Finland), where it was stored, and took it to his home.

A few weeks later, the bearings were delivered to a third party in order to be exported to Russia.

B received as remuneration for those services a carton of cigarettes and a bottle of brandy.

In criminal proceedings for trade mark infringement brought against B before the Court of first instance of Helsinki, Finland, to which proceedings A was joined with respect to his civil interest, that court acquitted B on the ground that it could not be proved that he had deliberately committed an offence. That court however ordered B not to continue or repeat such conduct and ordered him to pay compensation and damages to A for the harm suffered by the latter.

B challenged those orders before the Court of Appeal of Helsinki, Finland.

That court, referring to the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), held that (i) B’s activity was, to a certain extent, equivalent to an activity of storage and onward transport of goods, and it had not been B’s objective to obtain any economic benefit from that activity, and (ii) the remuneration received on that occasion was not based on the economic exploitation of the goods in the course of a business but constituted only consideration for the storage of goods on behalf of a third party.

In the light of the foregoing, the Court of Appeal of Helsinki held that B had not used in the course of trade a sign similar to the registered trade mark at issue in the main proceedings and, consequently, held that the claim for compensation and damages made by A was unfounded.

A brought an appeal against that judgment before the Supreme Court, Finland.

The Supreme Court submits that it is not clearly apparent from the Court’s case-law whether the extent of the economic benefit obtained by a private person by reason of an alleged infringement of a trade mark is a relevant factor in order to determine whether or not there is use of a trade mark in the course of trade.

Further, while it is plain that Article 5 of Directive 2008/95 applies where a person uses a trade mark in the course of his or her own economic activity, there may be some doubt on that point where that person uses it for the benefit of a third party.

The Supreme Court submits that, in the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), it was held that the proprietor of a tax and customs warehouse who does no more than store on behalf of a third party goods bearing a sign identical or similar to a trade mark does not use that sign. The referring court is uncertain whether such case-law can be transposed by analogy to a case, such as that in the main proceedings, where an individual, in exchange for a bottle of cognac and a carton of cigarettes, has imported goods on behalf of a third party and has retained and stored them, prior to their being uplifted for onward shipment to a non-Member State.

The referring court is uncertain, last, whether the fact that an individual makes known his or her address to a dealer in goods, and takes delivery of them, although he or she did not request that those goods be sent to him or her and he or she took no other active role, can be considered to constitute the importing of goods, within the meaning of Article 5(3)(c) of Directive 2008/95.

In that regard, the referring court notes that, in the judgment of 18 October 2005, Class International (C‑405/03, EU:C:2005:616), the Court held that a prerequisite of goods being put on the market is that those goods have been released for free circulation within the meaning of Article 29 TFEU, which means that the customs duties and charges having equivalent effect that are due have been collected in that Member State. The referring court submits that there is uncertainty as to whether importing can be considered to occur where the person concerned does no more than take delivery of goods sent to his or her address, although he or she did not request that those goods be sent and there is no other active participation by that person in the shipment of those goods into the country.

In the light of all the foregoing, the Supreme Court decided to stay the proceedings and to refer to the Court the following questions for a preliminary ruling:

‘(1)  Is the amount of the benefit received from an alleged infringement of a trade mark by a private individual relevant when assessing whether his conduct is the use of a trade mark in the course of trade within the meaning of Article 5(1) of [Directive 2008/95]or purely private use? If a private individual uses a trade mark, does use in the course of trade require the satisfaction of criteria other than the requirement of economic benefit obtained from the transaction in question concerning the trade mark?

(2)  If the economic benefit must have a certain degree of significance, and a person, on the basis of the triviality of the economic benefit received by him and the non-fulfilment of other possible criteria of use in the course of trade, may not be regarded as having used a trade mark in the course of his own trade, is the condition of use in the course of trade within the meaning of Article 5(1) of [Directive 2008/95] satisfied if a private individual uses a trade mark on behalf of another person as part of that other person’s trade, where he is not, however, an employee in the service of that other person?

(3)  Does a person keeping goods use a trade mark in relation to goods within the meaning of Article 5(1) and (3)(b) of [Directive 2008/95] if the goods on which the trade mark is affixed, sent to a Member State and released into free circulation there, are taken delivery of and retained on behalf of a company that deals in goods by a person who does not carry on a business of importing and storing goods and who does not have a licence to operate a customs warehouse or tax warehouse?

(4)   May a person be regarded as importing goods on which a trade mark is affixed within the meaning of Article 5(3)(c) of [Directive 2008/95] if the goods were not imported at the person’s request, but the person provided his address to a dealer and the goods released into free circulation in the Member State were taken delivery of by that person on behalf of the dealer, and that person retained them for some weeks and delivered them for shipment to a third country outside the European Union for the purpose of resale there?’

The Court’s decision:

Article 5(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, read in conjunction with Article 5(3)(b) and (c) of that directive, must be interpreted as meaning that a person who does not engage in trade as an occupation, who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his or her address from a third country and where a trade mark, without the consent of the proprietor of that trade mark, is affixed to those goods, must be regarded as using that trade mark in the course of trade, within the meaning of Article 5(1) of that directive.

Finland signed the Singapore Treaty on the Law of Trademarks

WIPO announced the ratification of the Singapore Treaty on the Law of Trademarks by Finland. The Treaty will come into force for the country on 07.08.2019.

For more information here.

Color or figurative trademarks – that’s the question

The European court has issued a decision on case C‑578/17 Oy Hartwall Ab v Patentti- ja rekisterihallitus, which focuses on how exactly a color trademark should be presented in a trademark application and how an acquired distinctiveness has to be proved. In detail this case concerns:

In 2012, Hartwall applied for the following color trademark in Finland, described as follows: ‘The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)’ (‘the mark at issue’):

The goods in respect of which registration was sought are in Class 32 ‘Mineral waters’.

Following a preparatory decision of the Intellectual Property Office, Hartwall clarified that it was applying for registration of the mark at issue as a ‘colour mark’, not a figurative mark.

The Finnish Patent Office rejected the application on the ground that the trade mark applied for was devoid of distinctive character.

In that regard, the Office highlighted that the exclusive right to register certain colours cannot be granted if it is not established that the colours in respect of which protection is sought have acquired distinctive character through long-term significant use.

The decision of the Finnish Patent Office stated that the market study produced by Hartwall showed that the reputation of the mark at issue was established not with regard to the colours as such but with regard to the figurative sign the contours of which are defined and determined. Therefore, contrary to the requirement resulting from that office’s consistent practice, it found that the colour combination in respect of which protection is sought has not been established as having been used to identify the goods offered by Hartwall for a sufficient length of time and sufficiently widely to have acquired distinctive character in Finland through use, as of the date on which registration was sought.

Hartwall appealed against this decision before the Market Court in Finland but the appeal was dismissed.

According to the court, the graphic representation of the sign in respect of which protection was sought did not include a systematic arrangement associating the colours concerned in a predetermined and uniform way and, therefore, that mark did not satisfy the requirements with regard to the graphic representation.

Hartwall appealed against the decision to the Supreme Administrative Court.

The Supreme Administrative Court highlights the importance of the case, in so far as the Intellectual Property Office is of the view that, as regards colour marks, the distinctive character of a sign must be proved by evidence of long-term significant use of the sign.

It is therefore unsure as to the consequences of the classification given to a sign by the person seeking protection of that sign under trademark law.

Because of this Supreme Administrative Court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  For the interpretation of Article 2 of Directive [2008/95] and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) thereof, is it of relevance whether the trade mark is to be registered as a figurative mark or a colour mark?

(2)  If the classification of the mark as a colour mark or figurative mark is of importance in the assessment of its distinctive character, is the mark, regardless of its representation as a drawing, to be registered as a colour mark in accordance with the trade mark application, or can it be registered only as a figurative mark?

(3) If it is possible to register, as a colour mark, a mark represented in the form of a drawing in the trade mark application, is it necessary for the registration as a colour mark of a mark which has been graphically illustrated in the trade mark application with the accuracy required by the case-law of the Court of Justice relating to colour marks (and which is not the registration as a mark of a colour in itself, abstract, without shape or contours), is it necessary to submit in addition solid evidence of use as required by the [Intellectual Property Office] or any such evidence?’

According to the European court:

In the overall analysis of distinctive character by reference to the actual situation, it is necessary to examine whether and to what extent the systematically arranged colour combination is capable of conferring inherent distinctive character on the sign in question.

Consequently, the answer to the first question is that Articles 2 and 3(1)(b) of Directive 2008/95 must be interpreted as meaning that the classification as a ‘colour mark’ or ‘figurative mark’ given to a sign by the applicant on registration is a relevant factor among others for the purpose of establishing whether that sign can constitute a trade mark within the meaning of Article 2 of the directive and, if so, whether it is distinctive within the meaning of Article 3(1)(b) of that directive, but does not release the competent trade mark authority from its obligation to carry out a global assessment of distinctive character by reference to the actual situation of the mark considered, which means that that authority cannot refuse registration of a sign as a mark on the sole ground that that sign has not acquired distinctive character through use in relation to the goods or services claimed.

In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark.

Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise.

Consequently, the answer to the second question is that Article 2 of Directive 2008/95 must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.

When employees can legally reveal trade secrets in Finland?

Antti Rajamäki – DLA Piper published a brief article regarding the implementation of the Trade Secrets Directive ((EU) 2016/943) in Finland. One very intriguing aspect of this is the cases when an employee can reveal legally its employer’s trade secrets and the way how he can do that.

The full article can be found here.

Marks, furniture, and distinctiveness in Finland

Marques Class 46 (information by Suvi Haavisto) reports about an interesting case regarding trademark lawsuit in Finland.

Laulumaa Huonekalut Oy, a furniture producer, filed a trademark infringement claim against Pohjanmaan Kaluste Oy, claiming that this company had been using its registered combine trademarks SARA, OLIVIA and SOFIA (in class 20) for branding different items of furniture.  Laulumaa asked the Court to order Pohjanmaan to cease the infringement and a compensation to be paid.

Pohjanmaan rejected this claim stating that those names were widespread in Finland for branding furniture for many years so in light of this they are not distinctive.

The Court allied with Pohjanmaan confirming that the names are not distinctive. The scope of protection of the already registered marks is limited only to their combine nature. In the case at hand, however, Pohjanmaan didn’t use these combine trademarks but only word names in standard font. So in that regard, there is no infringement.

This case is quite indicative of the way how applicants define their trademark strategies. Some companies, in an attempt to escape possible trademark refusals by Patent Offices, applied for not so distinctive signs combining them with graphical elements or fonts. Although they can register such marks successfully most of the times, this, unfortunately, doesn’t mean that they can rely on them in such lawsuits because of the limited scope of protection.