The Finnish Supreme Administrative Court has published a ruling on likelihood of confusion and association with a reputed trade mark. Marjut Alhonnoro discusses it.

The Finnish Supreme Administrative Court has in June 2017 in Case KHO:2017:92 given a decision regarding an opposition based inter alia on likelihood of confusion and reputation of an earlier trade mark accepted in the list of trade marks with a reputation maintained by the Finnish Trade Mark Office.

The list was established to increase awareness of trade marks with a reputation. While the list does not have legal effect, the reasoning of this decision indicates that the court has given some independent value to the list entry per se.

Background to the case

The defendant, Oy Valioravinto Ab, had in 2009 obtained registration (no 247045) for a figurative trade mark Valioravinto 1960 in classes 5, 29, 30, 31 and 32. Valio Oy opposed the registration on the grounds of its earlier trade mark registrations (EUTM no 174359 VALIO and no 8122641 figurative trade mark Valio) and its reputed trade mark VALIO that has been accepted in the list of trade marks with a reputation (no 2007025).

The Finnish Patent and Registration Office found the marks dissimilar inter alia on the grounds that, within the context of the opposed mark, the Finnish word "valio" (meaning "superior" or "first-class") was regarded as having a weak distinctive character due to the meaning of the opposed mark as a whole. The part "ravinto" means "nutrition". Therefore, even though the reputation of the earlier mark was acknowledged, the opposition was rejected on the grounds of dissimilarity of the marks.

Valio Oy appealed the decision before the Finnish Market Court which, aligned with the Finnish Patent and Registration Office, found that the visual, aural and conceptual differences were sufficient to exclude likelihood of confusion between the respective marks, because even though the marks share the word "valio", it was not regarded as having any independent character in the semantic overall impression given by the opposed mark. Thus, the court considered that the average consumer would not associate the respective marks with each other and, therefore, did not deem it necessary to assess the scope of protection of the reputed trade mark VALIO.

Supreme Administrative Court ruling

Valio Oy went on to appeal the decision before the Finnish Supreme Administrative Court. Contrary to the position taken by the Market Court, the Supreme Administrative Court considered that the word "valio" is the dominant element in the opposed mark, because the word "ravinto" ("nutrition") must be regarded as having a weak distinctiveness in respect of the relevant goods, the year "1960" has a minor role in the overall impression given by the opposed mark and the figurative element is not very unique.

Moreover, the court noted that Valio Oy has multiple trade mark registrations for different word combinations composed of the trade mark VALIO together with various descriptive words, and they can be regarded as forming a "series" or "family" of trade marks in accordance with EU case law (C-317/10 P, Union Investment Privatfonds v UniCredito Italiano).

Consequently, the court came to the conclusion that there is a likelihood of confusion between the figurative trade mark Valioravinto 1960 and the earlier trade marks in classes 29 and 32 as far as those goods are concerned in respect of which the mark VALIO is accepted to the list of trade marks with a reputation and has a particularly strong position in the market.

As regards other goods covered by the opposed mark in classes 5, 29, 30, 31 and 32, the court held that, considering the similarity of the respective marks and goods and the broad reputation and strong distinctiveness of the earlier mark, there exists a likelihood of association between the respective marks, and the use of the mark Valioravinto 1960 would be detrimental to the distinctiveness of the VALIO trade marks and take unfair advantage of the repute and the distinctive character thereof. As the holder of the opposed mark failed to show any relevant due cause to use the mark Valioravinto 1960, the Supreme Administrative Court held that the registration must be cancelled.

Prepared by Marjut Alhonnoro of Roschier, Finland