The Market Court in Finland has evaluated the distinctiveness of the trade mark PAINT PRO in its decision of 19 February 2015 (Market Court Decision MAO: 127/15). The international trade mark registration (no. 1157844) PAINT PRO by applicant Altro Limited, designated for Finland, covered

"Chemicals for restoring and/or renovating vehicle paintwork" (Class 1);

"Lacquers for restoring and/or renovating vehicle paintwork" in class 2 and "Cleaning, polishing, rust removing and scouring preparations; abrasive preparations (not for dental use); shampoos; soaps; detergents (not for use in industrial or manufacturing processes or for medical use); wax for restoring and/or renovating vehicle paintwork" (Class 3).

The Finnish Trade Mark Office held on 20 August 2014 that PAINT PRO lacked distinctiveness as the word "paint" refers to paints and painting and the word "pro" is a common abbreviation of the word “professional” which refers to the fact that the product is aimed at professionals. Thus, as a whole, the trade mark refers to professional products for restoring and renovating vehicle paintwork. Additionally these meanings of the words "paint" and "pro" are well known by the average Finnish consumer. The Finnish Trade Mark Office thus stated that the trade mark expressed the kind, quality and purpose of use of the goods in their target group and did not therefore distinguish Altro’s goods from the corresponding goods of others.

The Trade Mark Office also stated that, even though Altro had shown that the trade mark was distinctive in the United Kingdom, Canada, Ireland and Hong Kong, there were several countries in which the trade mark was not found to be distinctive such as USA, Norway and France. The Office added that it was not bound by OHIM decisions (Altro had pointed out that OHIM considered distinctive the trade marks Timber Pro in Class 2, EYEPRO in Class 1 and Design Pro in Classes 1 and 3).

Altro appealed to the Market Court and argued that its goods did not contain paints but rather chemicals, lacquers and waxes for restoring and renovating vehicle paintwork, and that the goods are not restricted to goods for professional use. Moreover the word “PRO”, which refers to professionals, was unconnected with the relevant goods. Altro added that the goods did not even as separate words describe the goods in the application; accordingly an independent distinctive trade mark was formed in the eyes of the target group. It was also reiterated that OHIM and other countries had allowed the registration of this and comparable marks, and that the Finnish Office had allowed registration of NANO-MAALI (in English: “nano-paint”) in Class 2 for e.g. paints. It was also mentioned again that not all the goods in the application for PAINT PRO were for vehicle paintwork products.

In response, the Office stated inter alia that, even though the goods in the application are not explicitly limited to professional use, the list of goods did cover professional goods. Moreover, even though decisions in other countries might be evaluated in this matter, there might be subtle differences in how the mark is understood by consumers in those countries and the average consumer in Finland.

The Market Court based its evaluation on Section 13 of the Finnish Trade Marks Act which indicates the requirements for registration of a trade mark. The Market Court stated that distinctiveness is evaluated in relation to the goods applied in the registration as well as with how the target group in question sees the trade mark. The target group for the goods in this case consisted of both professionals in the field of vehicle paintworks and average consumers of the goods concerned. The Market Court agreed with the Trade Mark Office that the word "paint" refers to paint and painting a surface and that "pro" refers to a professional as well as the professional use and good quality of the goods concerned. Thus, said the Market Court, the target group would understand the mark to refer to kind, quality and purpose of use of the goods concerned.  

The Market Court added that all the goods in the application may be used to handle vehicle paintwork either before the act of painting or directly after it and that the goods were mthus directly connected to painting. This applies to Class 3 goods– even though those goods are not limited to handling vehicle paintwork – since the target group will understand that the product may be spread on different surfaces in a similar manner to paint. The target group would therefore view the applied mark as describing the kind, quality and purpose of use of all the goods in question. Finally, even though the foreign decisions may bear weight in the evaluation, in this case no such conclusion may be made that the registration would be seen as distinctive based on them.

In conclusion, the Market Court stated that the international registration PAINT PRO in classes 1, 2 and 3 designated in Finland was not distinctive under Section 13 of the Finnish Trade Marks Act.

The decision of the Market Court can be found here (in Finnish).

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)