The CJ has rendered several landmark decisions regarding trade marks with reputation during recent years, such as L’Oréal v Bellure (C-487/07) and Intel Corp. v CPM UK (C-252/07).
There have been some Finnish cases regarding trade marks with reputation as well, two of which are addressed below.
Finnish Supreme Court: OIVARIINI – VOIMARIINI - INGMARIINI
In Arla Ingman v Valio (KKO 2010:12; 19 February 2010) the Finnish Supreme Court ruled that Arla Ingman’s trade mark INGMARIINI does not infringe Valio’s trade marks VOIMARIINI, OIVARIINI and MARIINI. The respective goods were identical (butter/margarine products), and the Court further held that VOIMARIINI and OIVARIINI are trade marks with reputation in Finland.
The use of the trade mark INGMARIINI was however not considered to infringe the earlier marks as, according to the Supreme Court, no “link” was established in the minds of average consumers between the marks of Arla Ingman and Valio. The Supreme Court defined this link by referring to several decisions of the CJ, including the Intel decision.
Accordingly, the existence of such a link must be assessed taking into account all factors relevant to the circumstances of the case, such as:
- the degree of similarity between the conflicting marks;
- the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
- the strength of the earlier mark’s reputation;
- the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and
- the existence of the likelihood of confusion on the part of the public.
The Supreme Court thereby applied the CJ’s case law that no likelihood of confusion between the marks was required for an act to qualify as infringement of a trade mark with reputation.
According to the Supreme Court, the common element (“RIINI“, “-ARIINI” or “-MARIINI”) referred to the Finnish word “margariini” (in English “margarine”) and was not principally a reference to Valio’s trade marks VOIMARIINI and OIVARIINI.
Primarily on this basis, the Supreme Court concluded that there was no need to continue to analyse other conditions required for infringement of a trade mark with reputation, namely unfair advantage of, or detriment to, the earlier marks.
The Supreme Court hearing took place on 17 June 2009, i.e. just one day before the CJ gave its decision in the L’Oréal case. Interestingly, the decision of the Supreme Court of 19 February 2010 did not mention or make any direct reference to the L’Oréal decision given by the CJ on 18 June 2009.
Helsinki District Court: HAKKAPELIITTA – HAKKAPELIITTAGPS
The criteria relating to unfair advantage were addressed in more detail by the Helsinki District Court in Nokian Tyres v Verkkokauppa.com (no 20036; 16 June 2009), in a judgment handed down only two days prior to L’Oréal v Bellure.
Verkkokauppa.com marketed and sold GPS navigators and accessories related thereto under the mark HAKKAPELIITTAGPS. Nokian Tyres sued Verkkokauppa.com based on its car tyre brand HAKKAPELIITTA.
Nokian Tyres won the case as the District Court found that HAKKAPELIITTA is a trade mark with reputation and HAKKAPELIITTAGPS had been taking unfair advantage of that goodwill.
It is notable that the District Court’s rationale in Nokian Tyres v Verkkokauppa.com was substantially in line with the CJ’s approach as set out in L’Oréal v Bellure only two days afterwards. The District Court ruled, inter alia, that:
- No likelihood of confusion is required, and unfair advantage and detriment are two alternative factors: only one of them is needed for an act to qualify as an infringement.
- Evidence of actual confusion between the marks (e.g. customers mistakenly believing there to be an economic link between the two trade marks) indicates, as such, that unfair advantage of the earlier mark has been taken.
- In assessing whether or not unfair advantage has been taken, weight may also be accorded to, for example, a defendant’s attempt to register a trade mark similar to the earlier well-known mark, and such defendant’s pattern of using trade marks somewhat similar to third-party well-known trade marks.