In September 2010 the Finnish Trade Mark Office rejected a a trade mark application by Nestlé Danmark A/S for the trade mark JÄÄTELÖAUTO for ice creams, popsicles and other ice cream products in Class 30; the ground of rejection was non-distinctiveness. In Finnish, the word JÄÄTELÖAUTO means “ice cream van”. The Trade Mark Office based its decision on the fact that the registration indicated the origin, quality and the intended use of the goods as "ice cream van" in fact means a van from which you can buy or sell ice cream. In addition the Trade Mark Office stated that there was insufficient proof on the fact that the trade mark had been in use for such a long time and so extensively that it would have become distinctive through use for the services in class 30 before the date of application.

The Board of Appeal of the Finnish Trade Mark Office annulled the decision of the Trade Mark Office and remited the application to the Trade Mark Office for it to be registered. It stated that even though the word JÄÄTELÖ (“ice cream” in Finnish) in the trade mark directly described ice cream, popsicles other ice cream products it did not as a whole, from the point of view of the average consumer, based on its meaning refer to such exclusive, direct or specific meaning that is normally used for such goods or in describing their characteristics. The applied-for mark was thus capable of distinguishing the goods for which registration was sought from other corresponding goods and was thus registrable. After lengthy proceedings the mark was finally registered in 15 October 2013 with the registration number 259346. 

A device mark (registration number 141984, illustrated on the left) for goods in class 30 had already been registered in the year 1994 by the same company.  Interestingly, the same company owns a trade mark (registration number 130608, above right) that is perhaps maybe more commonly known to the Finnish consumers and has been registered since 1994 as well (kotijäätelö means ”home ice cream”in Finnish).

The complex situation in the ice cream field in Finland has however resulted in these registrations not yet being in use. Suomen Kotijäätelö started its business as long ago as 1994 and had been an affiliate of Nestlé in Finland since 2008. However, in 2012 quite a large number of ice cream vans ceased trading as their business was not profitable and the business ceased in its entirety in 2013. In the spring of 2014 a new company Suomen Jätskiautot Oy (“jätski” being a nickname for ice cream in Finnish) started its business. They already have a registration for the device mark (registration number 260766, right) in classes 30, 35 and 39. It is interesting to see what the future holds for this company and its trade mark and whether the old Kotijäätelö will ever rise from the ashes.   

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