In its Decision MAO: 492/15 of 6 July 2015 the Finnish Market Court in Finland concluded that international trade mark registration No 1141349 for the numeral 1953, designating Finland, was distinctive for the goods and services for which it was registered in classes 18, 25 and 35. The applicant was the Swedish clothing company KappAhl Sverige AB and the mark covered the following goods and services:

• Class 18: "Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; backpacks; bags and cases of leather; covers of leather; handbags; school bags; shopping bags; beach bags; toiletry bags (leather goods); suit valises; jewellery bags of textiles materials (empty); pocket purses; purses";
   
• Class 25: "Clothing, footwear, headgear";
   
• Class 35: "Retail services for clothing, headgear, footwear, umbrellas, parasols, leather and imitation leather and goods made of these materials, precious metals and their alloys and goods in precious metals or coated therewith, jewellery and costume jewellery, skin care products, perfumes, cosmetics, soaps, essential oils, hair lotions; business management services within the framework of franchising of clothes".

The Finnish Trade Mark Office decided in March 2014 that the international registration was not valid in Finland since it expressed the origin of the goods and services in question. According to the Office, it merely consisted of the number sequence 1953 which was understood to be the year when KappAhl was established or the year in which the production of the goods or rendering of the services commenced. The Office added that even though the trade mark was accepted for registration in Sweden, it had also been refused registration in several countries including Lithuania, Poland, Romania and Slovakia.

KappAhl did not agree and appealed to the Market Court, stating that the trade mark 1953 was distinctive as a whole: the Office was wrong to find that it was not distinctive on the grounds stated:  if the mark described KappAhl as a company, it still did not describe the goods and services for which the trade mark was used. KappAhl added that, since the numbers in the trade mark were presented graphically and did not expressly refer to any of the goods and services covered by it, the mark was eligible for registration.

KappAhl supported its arguments by stating inter alia that both the Finnish Trade Mark Office and OHIM had accepted trade marks that consist of numbers for registration (i.e. trade marks 501, 1188, 1650 in Finland and trade marks 1955 and 1956 in OHIM). The coherency of the Scandinavian decisions was also cited: since the mark was already registered in Sweden, that decision should guide the Finnish Trade Mark Office.

The Office disagreed, pointing out that graphic presentation and distinctiveness are two completely separate issues: in any event, the cited accepted examples trade marks registered in Finland were  not comparable to KappAhl’s mark since they did not refer to the year the applicant was established.

KappAhl then sought to strengthen its arguments by stating that numbers are not usually used as trade marks for clothing. Accordingly, even if the mark would be seen as referring to a year, consumers would still perceive it as a tool for distinguishing its own goods from those of other businesses. What’s more, 1953 has been used in Finland since the year 2009 and haf thus become distinctive through use.

The Market Court based its evaluation on Section 1(2) of the Trade Marks Act:

"Any kind of mark that can be represented graphically and by means of which goods marketed in business can be distinguished from those of others may be a trade mark. A trade mark may in particular consist of words, including personal names, figures, letters, numerals or the shape of goods or of their packaging"

Reliance was also placed on Section 13, which provides the requirements for registration of a trade mark, as we;; as Trade Mark Directive 2008/95 as well as the legal practice in relation to it.

The Market Court considered EU legal practice which indicated, among other things, that the fact that the trade mark merely consists of numbers does not prevent it from being registered; further, a number trade mark lacking special graphic alteration and artistic stylizing could still be registered as a trade mark. Additionally, the registration of a trade mark should be refused only if it is within reason that the target audience sees the trade mark as describing the characteristics of the products or services of the trade mark that are easily distinguished by the target audience (Agencja Wydawnicza Technopol v SMHV, C-51/10 P, EU:C:2011).

The Market Court concluded that 1953 did indeed refer to a year – maybe even to the year when KappAhl was established -- but that there was in principle no reason why the year could not work as a trade mark. The trade mark 1953 did not describe the goods and services covered by the registration and there was no sufficiently direct and concrete relationship between the trade mark and the goods and services for the trade mark to be descriptive. Neither the fact that the owner company was established in a certain year nor the fact that rendering the goods and services commenced in a certain year was not a characteristic of the goods and services. It is also not within reason that the target audience sees the goods i.e. textiles and clothing to be manufactured in year 1953 and would see the year as a characteristic of the products nor see the number as any other characteristic of the product. Accordingly, since there was no other reason why the trade mark would not be distinctive, the Market Court considered it distinctive for all the relevant goods and services and reversed the decision of the Office, remitting the matter to the Office for registration.

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

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