FinnIPR - IPR updates from Finland

The Market Court: An Apparatus and Method for Treating Pulp Does Not Involve an Inventive Step

noreply@blogger.com (Author - FinnIPR) — Mon, 05 Sep 2016 07:35:00 +0000

The Market Court issued a patent decision 454/16 on 21 July 2016. The court ruled that the applied invention (Apparatus and method for treating pulp) is not patentable because the patent claims do not involve an inventive step. As a result, the court ordered PRH to revoke the patent FI 122775.

Background

Andritz Oy (Andritz) sought patent protection on its invention called "Apparatus and method for treating pulp" on 7 September 2004. The application consisted of two independent claims (1 and 15) and dependent claims 2-14 and 16-24. The Patent and Registration Office (PRH) granted a patent for the invention (FI 122775) on 29 June 2009.

FI 122775, Figs. 1a-1b.

Metso Paper Sweden AB (Metso) lodged an invalidation claim against the patent. During the invalidity proceedings at PRH, Andritz filed amended claims first on 16 October 2013 and later on 12 May 2014. PRH granted a patent for the invention on 1 December 2014 in accordance with the amended claims provided on 12 May 2014 (independent claims 1 and 12 and dependent claims 2-11 and 13-21).

Later on, the company name Metso was changed to Valmet AB (Valmet).

Valmet did not agree with the decision of PRH and lodged an appeal at the Market Court. Valmet requested the Market Court to reverse the decision of PRH.

The Market Court

According to section 1 paragraph 1 of the Patents Act (550/1967), anyone who has, in any field of technology, made an invention which is susceptible of industrial application, or his or her successor in title, is entitled, on application, to a patent and thereby to the exclusive right to exploit the invention commercially, in accordance with this Act.

According to section 2 of the Act, patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

According to section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of sections 1 and 2.

The Applied Claims

The independent claims 1 and 12 (translated with the help of CA2578004 A1):

1. An apparatus for treating pulp, said apparatus comprising at least one liquid-permeable surface rotating around a shaft, onto which surface a pulp layer is formed, means for feeding the pulp being treated into the apparatus, means for discharging the treated pulp from the apparatus and means for removing filtrates from the apparatus, characterized in that the apparatus is provided with at least one inside construction for forming at least two treatment sections in the apparatus in such a way that each of the sections is connected to means for feeding at least one pulp so that the pulps treated in the sections come from essentially different treatment stages and to pulp removal means so that the treated pulps are removed from the apparatus separately, whereby the apparatus comprises a first and a second treatment section, the pulp feeding means of the first thereof being connected to a first treatment stage with first treatment conditions and the pulp feeding means of the second thereof being connected to a second treatment stage with second conditions.

12. A method for treating pulp, in which method the pulp is fed onto a liquid-permeable surface rotating around a shaft of the treatment apparatus, onto which surface a pulp layer is formed, wherefrom liquid is removed, and the treated pulp is removed from the apparatus, characterized in that a first layer of pulp is formed on the rotating surface, said pulp coming from a first treatment stage, and in a distance from the first layer in the longitudinal direction of the shaft a second pulp layer is formed, said pulp coming from a second treatment stage, and the pulp layers are treated essentially separately from each other.

Prior Art

The prior art in this case consists of the following documents:

O1: US 5641402
O2: US 5275024
O3: WO 92/22703
O4: US 4551248.

Novelty and Inventive Step

The court stated that the drum filter defined in the applied invention is new compared to the solutions defined in the prior art.

The court then moved on to assess the inventive step regarding the claims 1 and 12.

The court considered that the apparatus described in the claim 1 and the apparatus described in the prior art O1 have only one difference: the former is describing a drum filter whereas the latter is describing a disc filter.

The court stated that the invention described in the O1 is solving the same problem as the drum filter described in the claim 1 of the applied invention. The court also stated that, according to the description of the O1, the disc filter and drum filter are alternatives regarding apparatus for treating pulp in the pulp and paper industry.

According to the court, the use of drum filter does not require any particular technical solution. Consequently, it is considered to be obvious to the person skilled in the art. The technical solution defined in the claim 1 does not involve an inventive step.

The method described in the claim 12 comprises the same technical features as the apparatus described in the claim 1. Consequently, this claim does not involve an inventive step, either.

The invention is not patentable.

As a result, the court returned the case to PRH and ordered PRH to revoke the patent FI 122775.

The Market Court: A Method and System for Relaying and Managing Call Messages Is Not Patentable

noreply@blogger.com (Author - FinnIPR) — Thu, 01 Sep 2016 12:54:00 +0000

The Market Court issued a patent decision 453/16 on 20 July 2016. The court ruled that the applied invention (Method and system for relaying and managing call messages) is not patentable because the original patent claims are lacking novelty and they do not involve an inventive step. Furthermore, the secondary claims do not involve an inventive step.

Background

Oy Exrei Ab (Exrei) sought patent protection on its invention called "Method and system for relaying and managing call messages" on 31 January 2006. The application consisted of three independent claims (1, 21 and 41) and dependent claims 2-20, 22-40 and 42-43. The Patent and Registration Office (PRH) granted a patent for the invention (FI 117912) on 14 April 2007.

FI 117912, Fig. 2.

Miratel Oy (Miratel) lodged an invalidation claim against the patent, but PRH dismissed the invalidation claim on 6 May 2008. Miratel then lodged an appeal at the Board of Appeal at PRH. The Board of Appeal accepted the invalidation claim and returned the case to PRH on 14 October 2011. PRH revoked the patent on 17 February 2012. According to PRH, the independent and dependent claims do not involve an inventive step.

Later on, the company name Exrei was changed to Everon Ab (Everon) and Miratel into Ascom Miratel Oy (Ascom Miratel).

Everon did not agree with the decision of PRH and lodged an appeal at the Market Court. Everon requested the Market Court to reverse the decision of PRH.

Furthermore, according to Everon, the patent application should be accepted in accordance with the claims that were under examination in the decision of PRH or, if that is not possible, in accordance with the claims attached into the appeal (independent claims 1, 17 and 33 and dependent claims 2-16, 18-32 and 34-35).

The Market Court

According to section 2 of the Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

According to section 8 paragraph 2 of the Act, the application shall contain [inter alia] a precise statement of the subject matter for which patent protection is sought.

According to section 13 of the Act, an application for a patent may not be amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed.

According to section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of section 2, or if the patent contains subject matter not included in the application as filed.

Prior Art

The prior art in this case consists of documents D1-D20 (a list with document names can be found in the decision). However, the court decided to dismiss the D4 because its publication date was not unambiguous.

The Original Patent Claims

The independent claims 1, 21 and 41 (translated with the help of US 20090016511 A1):

1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider.

21. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider.

41. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider.

The court considered that all the features of the independent claim 1 are found in a prior art D1a. The D1a is an issue of a customer magazine produced by Ascom Miratel. The D1a introduces a software called CareWin. The software is used to receive safety calls and alarms. This software is, according to the court, a method for relaying and managing call messages, in which a customer terminal (safety phone) sends a call and a service terminal (caretaker of a person responsible for the service) receives an assignment and in which there is a transmission of the call information from the customer terminal to the server (CareWin-software).

The court then stated that the independent claims 21 and 41 consist of the same technical features as defined in the claim 1.

The court concluded that the independent claims 1, 21 and 41 are lacking novelty and they do not involve an inventive step.

The Secondary Patent Claims

The independent claims 1, 17 and 33 (translated with the help of US 20090016511 A1, the changes are written in red):

1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider, whereby the method includes

- the server comprising a log memory for storing data pertaining to calls that have arrived and/or assignments sent,

- storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and

- invoicing the customer for the services on the basis of said log data.

17. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes

- a log memory for storing data pertaining to calls that have arrived and/or assignments sent,

- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and

- means (214, 218) for invoicing the customer for the services on the basis of said log data.

33. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes

- a log memory for storing data pertaining to calls that have arrived and/or assignments sent,

- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and

- means (214, 218) for invoicing the customer for the services on the basis of said log data.

Ascom Miratel argued first that the claims are amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. Furthermore, Ascom Miratel argued also that the amended application does not contain a precise statement of the subject matter for which patent protection is sought. The court dismissed these arguments.

Now it was time to assess whether the invention, in the form of the secondary claims, is new in relation to what was known before the filing date of the patent application, and also involves an inventive step.

The secondary claim 1 defines, inter alia, how the server comprises a log memory for storing data pertaining to calls that have arrived and/or assignments sent and how the invoicing is based on the log data. The prior art D1a does not contain any information of storing data pertaining to calls that have arrived and/or assignments sent. Therefore, according to the court, the invention defined in the claim 1 is new in relation to the prior art D1a.

However, the court stated that the description of the invention does not explain any technical effect achieved based on the type of data stored and the type of log data used in the invoicing. The description only explains that the method is solving a problem regarding the automation. The court then added that also the method defined in the prior art D1a is automatized.

The court then stated that it would be obvious for the person skilled in the art to use the stored call and/or assignment data in invoicing. The person skilled in the art also understands that the software introduced in the prior art D1a might comprise a feature, or it is possible to add such a feature into the software, in which data, pertaining to calls that have arrived and/or assignments sent, is used.

Therefore, according to the court, the invention defined in the secondary claim 1 does not involve an inventive step.

The court then stated that the secondary claims 17 and 33 comprise the same technical features as the secondary claim 1. Consequently, these claims do not involve an inventive step, either.

The invention is not patentable.

The action is dismissed.

The Market Court: The Applied Invention (Limitation of Voltage Pulse) Does Not Involve an Inventive Step

noreply@blogger.com (Author - FinnIPR) — Wed, 31 Aug 2016 10:52:00 +0000

The Market Court issued a patent decision 452/16 on 20 July 2016. The court ruled that the applied invention (Limitation of voltage pulse) is not patentable because it does not involve an inventive step.

Background

Vacon Oyj (Vacon) sought patent protection on its invention called "Limitation of voltage pulse" on 20 June 2007. The application consisted of two independent claims (1 and 5) and dependent claims 2-4 and 6-12. The Patent and Registration Office (PRH) granted a patent for the invention (FI 119669) on 30 January 2009.

FI 119669, Figs. 1-2.

ABB Oy (ABB) lodged an invalidation claim against the patent. Vacon answered by filing amended patent claims (independent claims 1 and 5 and dependent claims 2-4 and 6-11), but PRH accepted the invalidation claim and revoked the patent on 22 March 2012. According to PRH, the independent claims 1 and 5 are lacking novelty and the claims 1-11 do not involve an inventive step.

Vacon did not agree with the decision of PRH and lodged an appeal at the Market Court. Vacon requested the Market Court to reverse the decision of PRH. Furthermore, according to Vacon, the patent application should be accepted in accordance with the amended claims that were under examination in the decision of PRH.

The Market Court

According to section 2 of the Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

The independent claims 1 and 5 (translated with the help of EP2020742):

Claim 1:

Method for controlling the output voltage pulses of a PWM frequency converter, in which PWM frequency converter is a network bridge (10) for rectifying the alternating voltage of the supply network into the DC voltage (U_DC) of the DC intermediate circuit, which is filtered with a filtering capacitor (C_DC), a load bridge (11) comprised of phase switches implemented with power semiconductor components, which forms the AC output voltage (U, V, W) from the DC voltage of the intermediate circuit for controlling the load (M),

characterized in that for setting the average speed of change in the output voltage in connection with each change of state of the output voltage at least one power component controlled by a phase switch is controlled such that before the output voltage remains in its position subsequent to the change of state it is on at least once for a short period, typically of less than 1µs (a micropulse), in the position prevailing before the change of state, and a filter containing passive components, with which the voltage of the micropulses is filtered into the final output voltage of the frequency converter.

Claim 5:

Arrangement for controlling the output voltage pulses of a PWM frequency converter, in which PWM frequency converter is a network bridge (10) for rectifying the alternating voltage of the supply network into the DC voltage (U_DC) of the DC intermediate circuit, which is filtered with a filtering capacitor (C_DC), a load bridge (11) comprised of phase switches implemented with power semiconductor components, which forms the AC output voltage (U, V, W) from the DC voltage of the intermediate circuit for controlling the load (M), and a control unit,

characterized in that for setting the average speed of change in the output voltage in connection with each change of state of the output voltage at least one power component controlled by a phase switch is fitted to be controlled such that before the output voltage remains in its position subsequent to the change of state it is on at least once for a short period, typically of less than 1µs (a micropulse), in the position prevailing before the change of state, and that the arrangement comprises a filter containing passive components, with which the voltage of the micropulses is filtered into the final output voltage of the frequency converter.

Novelty

Prior art contains the following documents:

- D1: Deisenroth H., Trabert C. Vermeidung von Überspannungen vei Pulsumrichterantrieben. ETZ. 1993, Bd. 114, Heft 17, s. 1060–1066, and

- D2: DE 4203054.

The court considered that the invention is new in relation to what was known before the filing date of the patent application. According to the court, the prior art does not include a solution in which a micropulse technique is combined with a filter containing passive components.

Inventive step

The court considered that the purpose of the combination of a micropulse technique and a filter containing passive components is to reduce the average speed of change in the output voltage. If the speed of change is too high, it could damage a motor connected to the frequency converter. The description of the invention does not define any other effect which is acquired by using simultaneously a micropulse technique and a filter containing passive components.

According to the court, the reduction of the speed of change by using a micropulse technique or a filter containing passive components is known from the prior art D1. Therefore, it would have been obvious to the person skilled in the art to combine a micropulse technique with a filter containing passive components.

The appellant also argued that the invention is reducing the costs, size and weight of the required apparatus. The court dismissed these arguments because the claims do not include any features that would clearly highlight these benefits.

Therefore, the invention does not involve an inventive step.

The action was dismissed.

New Registry-Registrar Model Enters into Force for .FI Domain Names

noreply@blogger.com (Author - FinnIPR) — Tue, 30 Aug 2016 11:14:00 +0000

The Finnish domain name system will change after the new legislation included in the Information Society Code (917/2014) enters into force on 5 September 2016. After the change, a person or a company will obtain .fi domain names and all related services from their own registrar. Therefore, the internationally known registry-registrar model enters into force in Finland.

The old system, where the Finnish Communications Regulatory Authority (FICORA) has sold .fi domain names, comes to an end. FICORA is going to continue to take care of the technical maintenance of the domain name register.

Here is a summary of the relevant changes:

- All the .fi domain name holders will have their own registrar managing domain names on behalf of the holder.

- Registrars will provide all the related services, such as applications, renewals, transfers, switching registrars, terminations and updating details.

- Local presence and age requirements (age limit of 15) for applications don't exist anymore. Therefore, the fi-domain names are available for a wider audience.

- A combination of first name and last name can be applied by anyone.

---

FICORA's own website contains information about the new practice.

The Finnish Copyright Society Kopiosto Introduced a Copyright Edutainment Game

noreply@blogger.com (Author - FinnIPR) — Mon, 29 Aug 2016 13:31:00 +0000

In August 2016, the Finnish Copyright Society Kopiosto introduced an edutainment game called Kopiraittila (the game is in Finnish and Swedish). The game is intended for children and young people.

In the game, the player will enter the fictional school of Kopiraittila. At first, the player is in a school hallway and there are four doors. Each door has a sign which determines the level of the player; school classes 1-2, 3-4, 5-7 and 8-9. The player can enter the classroom by clicking the door. The classrooms contain quizzes, memory games and spinning wheels. Kopiosto has stated that it is planning to publish material also for secondary school students.

The game informs the players about the existence of different kinds of copyrights and emphasizes the correct use of sources. Different copyright issues are involved in everyday scenarios, such as the use of Internet and social media, creation of videos and photographing. The game teaches the players to respect the copyrights of others and to be aware of their own copyrights.

"We hope that this visual edutainment material will inspire the students and teachers to create works and to respect copyrights. If one needs to check the correct copyright policy, it is easy to return to the school of Kopiraittila" (FinnIPR translation), says Kirsi Salmela, Licensing Manager, Kopiosto ry.

The game is created by a creative digital agency JCO Digital.

The Market Court: FINKA (Figure) Is Confusable with FINKA for Vodka

noreply@blogger.com (Author - FinnIPR) — Sat, 30 Jul 2016 07:41:00 +0000

The Market Court issued a trademark decision 432/16 on 8 July 2016. The court ruled that the applied national trademark FINKA (figure) is confusable with the earlier European Union trademark FINKA. Both marks are registered in class 33.

Background

Saimaa Beverages Oy Ltd (Saimaa) applied to register a figure mark FINKA in class 33 for vodka on 20 August 2014.

Application no. T201451621.

The Patent and Registration Office (PRH) denied the registration (decision 8 April 2015) because the mark is liable to be confused with an earlier European Union trademark (EUTM) registration FINKA (no. 004750634), registered on 13 October 2006. The EUTM FINKA is registered in class 33 for alcoholic beverages, in particular vodka.

Saimaa filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 432/16 on 8 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 9 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a European Union trademark within the meaning of section 57 that has been registered on the basis of an earlier application.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court referred to the established case-law and stated the following:

There is a likelihood of confusion where the public can be mistaken as to the origin of the goods or services in question.

Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.

In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. The comparison of the goods or services should also focus on their distribution channels and their usual origin.

The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.

The applied mark FINKA (figure) covers the following goods in the class 33: vodka. The earlier EUTM FINKA is registered in class 33 for alcoholic beverages, in particular vodka.

These goods are consequently considered identical.

The court stated that the average Finnish consumer of the category of goods concerned is deemed to be reasonably observant.

The applied mark FINKA is a figure mark and it is written in capital letters. The mark has a rather usual font. The letter A is stylized.

The earlier EUTM FINKA is a word mark that consists of a word "FINKA". Neither of the parties argued that the word "FINKA" would have any generally known meanings regarding the goods in question. Therefore, the EUTM FINKA has a normal distinctiveness for the goods.

The conflicting marks have a very high degree of visual similarity, despite the stylized letter A in the applied mark. Furthermore, the marks are aurally identical. The conceptual similarity cannot be compared since the word "FINKA" does not have a clear meaning among the relevant public.

The court stated that the conflicting marks have identical goods. Furthermore, the marks have a very high degree of similarity. The court concluded that the applied mark FINKA (figure) is confusable with the mark FINKA.

The action was dismissed.

The Market Court: CJ (figure) Is Confusable with CJ (figure) for Goods In Class 5

noreply@blogger.com (Author - FinnIPR) — Sat, 30 Jul 2016 07:22:00 +0000

The Market Court issued a trademark decision 431/16 on 8 July 2016. The court ruled that the applied national trademark CJ (figure) is confusable with the earlier European Union trademark CJ (figure). Both marks are registered for goods in class 5.

Background

CJ Corporation (CJC) applied to register a national trademark CJ (figure) in class 5 for the following goods:

pharmaceutical preparations; antihypertensives; medical preparations; pharmaceutical preparations for treating sensory organ disorders; nervines; chemical preparations for medical purposes; ferments for pharmaceutical purposes; pharmaceutical preparations for diagnosis; food supplements; pain relief preparations; microorganisms (cultures of -) for medical; filled first-aid kits; cotton for medical use; baby foods; lacteal flour for babies; lactose for pharmaceutical purposes; medicated diapers; insecticides; moth proof paper; veterinary preparations; protein supplements for animals; nutritional supplements for animal foodstuffs.

Application no. T201452181.

The Patent and Registration Office (PRH) denied the registration (decision 13 August 2015) because the mark is liable to be confused with an earlier European Union trademark (EUTM) registration CJ (figure, no. 5400494), registered on 29 November 2007. The EUTM CJ (figure) is registered in class 5 for pharmaceutical, veterinary and sanitary preparations; sanitary preparations for medical purposes, dietetic substances for medical purposes, foodstuffs for babies, plasters, materials for dressing, material for stopping teeth and dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides. The mark covers also various goods in class 10.

EUTM no. 5400494.

CJC filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 431/16 on 8 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 9 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a European Union trademark within the meaning of section 57 that has been registered on the basis of an earlier application.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court assessed first the goods of the conflicting marks and stated that the goods are identical or at least highly similar.

The court assessed then the relevant public. The court referred to the case-law of the Court of Justice (CJ). CJ has ruled that:

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question. [See C-342/97 Lloyd, para 26.]

The appellant argued that the goods of the applied mark are mainly prescription drugs and therefore the relevant public does not have an influence on choosing the products and is not able to compare different products and confuse them.

The court referred to the case-law of the General Court (GC):

As regards the relevant public, it is established case-law that, when the goods in question are medicines, the relevant public is composed of medical professionals, on the one hand, and patients, as the end consumers, on the other.

According to the case-law, medical professionals have a high degree of attentiveness when prescribing medicines. Moreover, with regard to end consumers, it is apparent from the case-law that, in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect where those goods affect their state of health, and that these consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products. Thus medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect. [See T-331/09 Novartis, paras 21 and 26.]

The court stated that the relevant public has a high degree of attentiveness for these goods (prescription drugs).

However, some of the goods, regarding both marks, are daily consumer goods and the relevant public of these goods is composed of all consumers. The court stated that these goods cannot be regarded as receiving a high degree of attentiveness.

The court referred again to the case-law of GC. GC has ruled that if the goods at issue are targeted at both the general public and professionals (e.g. doctors), the relevant public consists of the general public because it is the one displaying the lower degree of attentiveness (See T-220/09 ERGO, para. 21). [Compare with T-126/03 ALADIN, para. 81.]

Therefore, the relevant public in this case is composed of reasonably well-informed and reasonably observant and circumspect average consumers. This kind of average consumer does not have a heightened degree of attentiveness regarding the goods in question.

It was now time to compare the two marks. The court referred again to the case-law of CJ. CJ has ruled that

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. [See C-251/95 SABEL, paras 22-23.]

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole. Although the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. [See C-20/14 BGW, paras 36-37.]

It must be stated that where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant. [See T-3/04 KINJI by SPA, para 45 and T-112/06 Inter-Ikea, para 45.]

Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark. [T-61/15 1&1 Internet, para 61.]

The court stated that the applied mark CJ slightly resembles a four-leaf clover where the word element CJ is one leaf and the blue, orange and red figurative elements are the remaining leafs. Since the word element CJ is lacking any straightforward meaning or connection to the designated goods, it can be considered as having a normal degree of distinctiveness. According to the court, the word element is the most dominant and distinctive element of the mark. However, the figurative elements are not completely insignificant.

The court stated that the earlier EUTM CJ consists of blue letter C and grey letter J and two curves. The court stated that the word element CJ can be considered as having a normal degree of distinctiveness and it is also the most dominant and distinctive element of the mark. The court emphasized again that the figurative elements are not completely insignificant.

The letter combination CJ is included in both marks. The letters also have a similar font even though the letters have different colors. According to the court, there is a rather high degree of visual similarity because the letter element is the most dominant element in both marks, despite the figurative elements in the marks.

The court stated then that the marks are aurally identical.

The court continued and stated that the conceptual similarity cannot be compared because neither the letter combination CJ nor the figurative elements have any clear conceptual meaning.

The court stated that the conflicting marks have a high degree of similarity based on the assessment above. The court concluded that the relevant public finds the marks confusingly similar.

The action was dismissed.

The Market Court: SENSURA MIO Is Not Confusable with MIO for Goods In Class 10

noreply@blogger.com (Author - FinnIPR) — Wed, 27 Jul 2016 07:45:00 +0000

The Market Court issued a trademark decision 430/16 on 8 July 2016. The court ruled that the applied international trademark SENSURA MIO is not confusable with the earlier European Union trademark MIO. Both marks are registered in class 10.

Background

Coloplast A/S (Coloplast) applied to register an international trademark SENSURA MIO in class 10 for ostomy bags and parts and fitting therefor (not included in other classes) and medical devices, namely, receptacles for the collection of excretions from the human body in relation to ostomy. The mark is based on a Danish trademark registration on 14 August 2013.

The Patent and Registration Office (PRH) denied the registration (decision 10 June 2015) because the mark is liable to be confused with an earlier European Union trademark (EUTM) registration MIO (no. 8175473), registered on 5 April 2011. The EUTM MIO is registered in class 10 for infusion and injection devices for administering drugs; parts and fittings for the aforesaid goods.

Coloplast filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 430/16 on 8 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 9 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a European Union trademark within the meaning of section 57 that has been registered on the basis of an earlier application.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court referred to the established case-law and stated the following:

In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. The comparison of the goods or services should also focus on their distribution channels and their usual origin.

The applied mark SENSURA MIO covers the following goods in the class 10: ostomy bags and parts and fitting therefor (not included in other classes) and medical devices, namely, receptacles for the collection of excretions from the human body in relation to ostomy.

The earlier EUTM MIO is registered in class 10 for infusion and injection devices for administering drugs; parts and fittings for the aforesaid goods.

The court stated that the goods are medical apparatus or instruments. The goods are not in competition and their intended purpose is not the same. However, both goods are part of health care functions and in that sense the goods are similar and their usual origin and their distribution channels are similar. The court stated that the goods are, to some extent, similar.

The court assessed then the relevant public. The court referred to the case-law of the Court of Justice (CJ). CJ has ruled that:

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question. [See C-342/97 Lloyd, para 26.]

The court stated that the relevant public consists, on the one hand, of medical or health professionals. The other part of the relevant public, emphasized by the court, consists of consumers who are using ostomy bags and other accessories related to ostomy. The court stated that the attentiveness of these consumers is considerably higher.

It was now time to compare the two marks. The court referred again to the case-law of CJ. CJ has ruled that

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. [See C-251/95 SABEL, paras 22-23.]

The applied mark SENSURA MIO consists of the words "sensura" and "mio". The court considered that the word "SENSURA" is the most dominant and distinctive element of the mark. However, the word "MIO" is not completely insignificant.

The earlier EUTM MIO consists of the word "mio" and, according to the court, the mark has a normal distinctiveness.

The two marks have a visual difference based on the amount of the words described above. Nevertheless, the court stated that the marks have, to some extent, a visual similarity.

The two marks have also an aural difference based on the amount of the words described above. The court considered that the relevant Finnish public is paying more attention on the beginning of the marks. Therefore, the word element "SENSURA" is the most dominant element when assessing the pronunciation of the applied mark SENSURA MIO. The court stated that there is a low degree of aural similarity.

The words "sensura" or "mio" do not have any clear meaning among the relevant Finnish public. The word "mio" is Italian. The court stated that the relevant Finnish public does not, per se, understand Italian. However, the relevant Finnish public might still understand the meaning of the word "mio" because it has similarities with the corresponding Swedish word "min" and the corresponding English word "mine". Therefore, there is a low degree of conceptual similarity.

Based on the assessment above, the court stated that the conflicting marks are, to some extent, similar.

It was now time to draw some conclusions. The court repeated that the goods are, to some extent, similar. The earlier EUTM MIO consists of the word "mio" and is thus wholly included in the applied mark SENSURA MIO. However, the word element SENSURA is the most dominant element of the applied mark SENSURA MIO. The court concluded that, after taking into account the differences and the high level of attention of the relevant public, the applied mark SENSURA MIO is not confusable with the EUTM MIO.

The court reversed the PRH's decision and the case was sent back to PRH for the registration of the applied mark.

The Market Court: Domain Name Dispute and the Appellant's Allegedly Established Trademarks

noreply@blogger.com (Author - FinnIPR) — Mon, 25 Jul 2016 06:19:00 +0000

The Market Court issued a domain name decision 418/16 on 1 July 2016. According to the court, the appellant, who was opposing a domain name registration, could not prove that its trademarks were evidently established at the time of the domain name application. In result, the revocation and transfer request was dismissed.

Background

The Finnish communications regulatory authority (FICORA) granted a domain name ppinet.fi to a person X on 9 November 2013.

TeliaSonera Finland Oyj (TeliaSonera) requested FICORA to cancel the domain name and to transfer it to TeliaSonera. TeliaSonera argued that the domain name is a derivative of its established trademarks iNET KESKUSKATU, INET and PP.INET.FI.

FICORA dismissed the request on 18 December 2014. According to FICORA, the establishment of the marks is not evident.

TeliaSonera filed an appeal to the Market Court against the FICORA's decision.

The Market Court issued its decision 418/16 on 1 July 2016.

The Market Court

According to section 4 paragraph 3 of Domain Name Act 228/2003 (amendments up to 397/2009 included), a domain name shall not be illegally based on a protected name or trademark owned by another party or on a natural person’s name.

According to section 3 sub-paragraph 3 of the Act, protected name or trademark means a name or trademark that has been entered into the trade register or into the registers of trademarks, associations, foundations, or political parties; or an established name, a secondary mark or trademark referred to in the Business Names Act (128/1979) or Trademarks Act (7/1964); or a name of a public body, unincorporated state enterprise, independent public corporation, public association, or diplomatic mission of a foreign state or their bodies.

According to section 12 paragraph 1 sub-paragraph 4 of the Act, FICORA may revoke a domain name, if there are weighty reasons to suspect that the domain name is a derivative of a protected name or trademark or a derivative of a natural person’s name that has been obtained with the obvious intent of obtaining benefit or harming another, and the holder of the name or trademark requests that the name be revoked and the domain name holder has not presented an acceptable reason for its right within a period of two weeks.

According to section 12 paragraph 2 of the Act, FICORA may transfer a domain name that has been revoked by virtue of paragraph 1 (2–4) to a party that has requested the revocation.

The court referred to Supreme Administrative Court (SAC) ruling 2006:41, where SAC stated that the competence of FICORA is, regarding the section 12 paragraph 1 sub-paragraph 4 of the Act, only limited to situations where it is evident that the domain name is an unlawful derivative of a protected trademark.

The court also referred to legal literature where it is stated that the establishment of the mark has to be evident. This requirement is justifiable because of the simplified procedure used in the assessment of the domain name applications.

The court had to assess whether the appellant's marks were evidently established at the time of the domain name application on 9 November 2013. If that was the case, the marks are then considered as protected trademarks and eligible for the protection provided in the section 12 paragraph 1 sub-paragraph 4.

TeliaSonera argued that the mark iNET KESKUSKATU was introduced in 1994 and it was used for a long time on a website inet.fi. According to TeliaSonera, this website was one of the most popular and used websites in Finland in the late 1990's.

TeliaSonera argued also that the mark INET has been used actively for internet services since 1995. INET was the most popular home internet plan in Finland. TeliaSonera has also had some other services with the mark INET, such as INET voice chat and INET live.

TeliaSonera argued also that the mark PP.INET.FI has been widely used for email services since 1995 and there are still many active users of the email addresses @pp.inet.fi.

The court stated that the marks of the appellant were introduced in the 1990's and they have been widely used back then. However, the assessment here required evidence of the alleged establishment at the time of the domain name application on 9 November 2013. The court stated that the provided evidence is not able to prove that the appellant's marks were evidently established at the time of the domain name application. Therefore, the marks were not protected and there was no need to assess whether the domain name has been obtained with the obvious intent of obtaining benefit or harming the appellant.

The action was dismissed.

The court ordered the appellant to pay the defendant's legal fees, in total 3 441 euros.

The Market Court: FUSION (Figure) Is Confusable with FRESH FUSION for Cigarettes and Tobaccos

noreply@blogger.com (Author - FinnIPR) — Thu, 21 Jul 2016 07:08:00 +0000

The Market Court issued a trademark decision 429/16 on 7 July 2016. The court ruled that the applied national trademark FUSION (figure) is confusable with the earlier international trademark registration FRESH FUSION. Both marks are for cigarettes, tobaccos and other smokers' articles.

Background

Reemtsma Cigarettenfabriken GmbH (Reemtsma) applied to register a figure mark FUSION in class 36 for cigarettes, tobaccos and other smokers' articles on 29 December 2014.

Application no. T201452598.

The Patent and Registration Office (PRH) denied the registration (decision 25 August 2015) because the mark is liable to be confused with an earlier international trademark registration FRESH FUSION (no. 1155884), registered on 11 February 2013. The mark FRESH FUSION is registered in class 34 for cigarettes, tobacco, tobacco products, lighters, matches and smokers' articles.

Reemtsma filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 429/16 on 7 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 8 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a trademark protected by an international registration valid in Finland or the European Community that on the basis of this registration enjoys an earlier right in Finland or the European Community.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court referred to the established case-law and stated the following:

There is a likelihood of confusion where the public can be mistaken as to the origin of the goods or services in question.

Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.

In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. The comparison of the goods or services should also focus on their distribution channels and their usual origin.

The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.

The applied mark FUSION (figure) covers the following goods in the class 34: tobacco, whether manufactured or unmanfactured; smokers' articles; tobacco substitutes (not for medical purposes); cigarettes; cigarillos; hand-operated implements for rolling cigarettes; mouthpieces for cigarette holders; cigarette filters; cigarette paper; electronic cigarettes; liquids for use in electronic cigarettes.

The earlier mark FRESH FUSION is registered in class 34 for cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles.

These goods are consequently considered identical.

The applied mark FUSION is a figure mark and it is written in capital letters. The mark has a rather usual font. The letters F and O are stylized. However, the figured elements are clearly secondary to the word "FUSION".

The earlier mark consists of two words, "FRESH" and "FUSION". It is likely that the relevant Finnish public understands the meaning of the English word "fresh". According to the court, the word element "FRESH" describes the quality of the goods. Therefore, the word element "FUSION" is the most dominant and distinctive element of the mark.

The biggest visual and aural difference between the marks is the word "FRESH" in the earlier mark FRESH FUSION. However, as mentioned above, the word "FUSION" is the most dominant and distinctive element of that earlier mark. Therefore, the conflicting marks have a high degree of visual and aural similarity.

Both marks have the word "fusion". It is likely that the relevant Finnish public understands the meaning of the English word "fusion". The word "fusion" is the most dominant element of the mark FRESH FUSION. Therefore, there is a very high degree of conceptual similarity.

The conflicting marks have identical goods. Furthermore, the marks have a visual, aural and conceptual similarity. The court concluded that the applied mark FUSION (figure) is confusable with the earlier mark FRESH FUSION.

The action was dismissed.

Big Finnish Music Artists Are Abandoning Copyright Society TEOSTO

noreply@blogger.com (Author - FinnIPR) — Tue, 19 Jul 2016 06:01:00 +0000

The country's largest newspaper Helsingin Sanomat had an article about music artists and copyright collecting societies on 16 July 2016.

The article explained how big Finnish music artists are abandoning the Finnish copyright society TEOSTO. The problem lies within the taxation and the fact that royalty payments are always personal income if you are an artist. It is not possible to channel the royalty payments into a company.

Taxation issues...
Image courtesy of stevepb at Pixabay.com

The newspaper wrote that the Finnish band Sunrise Avenue has been a member of STIM, a collecting society in Sweden, since 2007. The lead singer of the band, Samu Haber, told that the band was offered a significant publishing agreement back in 2007. The publisher did not want to sign the contract with TEOSTO so the band had to choose STIM.

TEOSTO is not pleased with the current situation. “We fear that we lose all the big Finnish artists”, says Teosto CEO Katri Sipilä. According to Sipilä, there are also many Finnish songwriters who are joining STIM.

The issue is mentioned in the current government programme. TEOSTO is hoping that the problem could be fixed.

---

SOURCE: Nissinen, Hannes (2016, July 16). Isot suomalaiset yhtyeet jättäneet Teoston – Samu Haber: ”En usko, että Suomessa on yhtään kansainvälisen tason artistia, joka olisi Teoston jäsen”. Helsingin Sanomat. [online] Available at: http://www.hs.fi/kulttuuri/a1468636274215 [Accessed 18 July. 2016].

The Finnish Trademarks Act Will Be Revised

noreply@blogger.com (Author - FinnIPR) — Fri, 15 Jul 2016 09:53:00 +0000

Ministry of Economic Affairs and Employment has appointed a working group to revise the current Trademarks Act (7/1964). The Ministry gave its decision on 22 June 2016.

This will be an overall reform that takes care of the implementation of the revised EU Trademark Directive 2015/2436 and the Singapore Treaty on the Law of Trademarks. This revision will also bring some changes to the Trade Names Act (128/1979).

The term of operation for the working group is between 15 August 2016 and 15 December 2017. The group will prepare a Government Proposal and the Proposal will be handed to the Parliament in Autumn 2018.

The Market Court Ordered ISPs to Give Up Personal Details of Internet Subscribers

noreply@blogger.com (Author - FinnIPR) — Fri, 15 Jul 2016 07:30:00 +0000

The Market Court issued three copyright decisions, 423/16, 424/16 and 425/16, on 7 July 2016. In the decisions, the court ordered the internet service providers TeliaSonera, DNA and Elisa to give up the personal details of thousands of IP addresses (in total 4 871 IP addresses) because copyrighted works were made available to the public to a significant extent from those IP addresses. The infringing acts occurred in a BitTorrent peer-to-peer network.

Background

Crystalis Entertainment UG is a rightsholder of the tv-shows Ash vs Evil Dead, Black Sails, Power and Spartacus.

According to the rightsholder, several Finnish internet subscribers have, unauthorised by the author, made the mentioned tv-shows available to the public to a significant extent. These infringing acts have occurred in a BitTorrent peer-to-peer network.

The IP addresses of the internet subscribers were logged by a technology company that had monitored the BitTorrent traffic. In March 2016, the rightsholder requested the Market Court to order the relevant internet service providers (ISP), namely TeliaSonera, DNA and Elisa, to give up the personal details of the internet subscribers pursuant to section 60a of the Finnish Copyright Act (404/1961).

The Market Court issued its decisions 423/16, 424/16 and 425/16 on 7 July 2016.

The Market Court

According to section 60a of the Act:

In individual cases, notwithstanding confidentiality provisions, an author or his representative shall be entitled, by the order of the court of justice, to obtain contact information from the maintainer of a transmitter, server or a similar device or other service provider acting as an intermediary about a tele-subscriber who, unauthorised by the author, makes material protected by copyright available to the public to a significant extent in terms of the protection of the author's rights. The information shall be supplied without undue delay.

The author or his representative who has obtained contact information referred to in subsection 1 above shall be governed by the provisions of the Information Society Code (917/2014) pertaining to confidentiality and the protection of privacy in communications, the handling of messages and identification data, information security, guidance and supervision, coercive measures and sanctions.

An author or his representative referred to in this section shall defray the costs incurring from the enforcement of an order to supply information and recompense the maintainer of the transmitter, server or other similar device or other service provider acting as an intermediary for possible damage.

The court stated that the section 60a of the Act must be interpreted in accordance with the Directives 2001/29/EC (The Copyright Directive), 2002/58/EC (ePrivacy Directive) and 2004/48/EC (Enforcement Directive).

The court referred to Court of Justice (CJ) decisions C-275/06 Promusicae and C-461/10 Bonnier Audio, where CJ has ruled that:

ePrivacy Directive does not preclude the possibility for the Member States of laying down an obligation to disclose personal data in the context of civil proceedings.[See C-275/06 Promusicae, paras 54-55 and C-461/10 Bonnier Audio, paras 54-55.]

Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality. [See C-275/06 Promusicae, paras 68-70 and C-461/10 Bonnier Audio, paras 59-61.]

After clarifying the legal basis, the court gave a thorough explanation of the BitTorrent protocol. The court stated that, inter alia, a group of computers downloading and uploading the same content is called a swarm. The computers in the swarm are transferring data between each other. A content shared in a swarm is infringing the author's exclusive right to control a work by making it available to the public. The conduct is infringing even if there are only few computers in the swarm. However, an individual infringement does not automatically mean that the infringer has made copyrighted material available to the public to a significant extent. The court stated that the assessment of the significant extent must be based on an overall consideration of the case. The amount of the users in the swarm is not, per se, decisive. One has to also take into account, for example, the possible harm caused by the entitlement to obtain personal details.

All the tv-shows were shared in multiple swarms. The court paid attention to the total size of the swarms, not only to the amount of the users that were connected with the infringer's IP address. The total size of the swarms regarding each tv-show was at least thousands of users during the analysed 24 hours.

The court stated that the total size of the swarms has a significance from the rightsholder's point of view. Even though the significant extent is assessed based on the amount shared by an individual user, one can not ignore the total size of the swarms involved in the distribution. The user can not choose the swarm and the amount of the users in each swarm is determined randomly. The log information shows that there has been a considerable demand for the works.

The court stated that the entitlement to obtain personal details is important in order to examine the infringement and to target the infringer. The sharing described above is so significant that the rightsholder needs to have a possibility to intervene the sharing even though it interferes with the protection of privacy. The court emphasized that if the rightsholder is entitled to obtain personal details, it is governed by the provisions regarding confidentiality and the protection of privacy in communications, the handling of messages and identification data and information security. Therefore, the reasons supporting the entitlement to obtain personal details are more significant than the harm caused to the internet subscriber.

The court concluded that copyrighted works were made available to the public to a significant extent from the listed IP addresses. The court ordered the relevant ISPs to give up the personal details of the internet subscribers.

Is this swarm meeting the threshold of significant extent?
Image courtesy of PixelAnarchy at Pixabay.com

The rightsholder also tried to get the personal details of the person who receives the invoices regarding the internet subscription. The court rejected this.

The court ordered also the rightsholder to defray the costs incurring from the enforcement of an order to supply information and to recompense possible damage.

Comments:

It seems that these internet subscribers will soon receive a settlement letter from the rightsholder. You can read more about the rightsholders' settlement letters here and here.

The Market Court: Domain Name Was Transferred Without the Consent of the Holder

noreply@blogger.com (Author - FinnIPR) — Thu, 14 Jul 2016 10:19:00 +0000

The Market Court issued a domain name decision 383/16 on 27 June 2016. According to the court, there were weighty reasons to suspect that the domain name was transferred to another party without the consent of the holder of the domain name and the transferee did not present an acceptable reason for its right. The court stated that the mere sending of a transfer key in an email is not, per se, expressing the consent of the domain name holder.

Background

The Finnish communications regulatory authority (FICORA) granted a domain name suurellasydamella.fi to the Federation of Evangelical Lutheran Parishes in Tampere (The Federation of Parishes) on 7 September 2005. The website contains information about volunteer work in the Federation of Parishes. The Federation of Parishes has also a trademark "Suurella Sydämellä" ("With a Big Heart" in English), registered in 2011.

Agile Design Oy (Agile) has, based on a contract between it and the Federation of Parishes, taken care of the maintenance issues regarding the domain name.

In September 2013, FICORA let the Federation of Parishes to know that some problems had occurred with the name servers of the domain name. The Federation of Parishes instructed Agile to take care of these problems. On 16 September 2013, the Federation of Parishes sent an email to Agile and the email included, inter alia, a transfer key. [A fi-domain name is transferred to a new holder by using a transfer key.]

Agile used the transfer key and the domain name was transferred to it on 12 October 2013.

The Federation of Parishes requested FICORA to cancel the domain name and to transfer it back to the Federation of Parishes. The Federation of Parishes argued that the domain name was transferred to Agile without the consent of the Federation of Parishes. Agile was, according to the Federation of Parishes, only allowed to fix the occurred problems. FICORA dismissed the request on 15 June 2015.

The Federation of Parishes filed an appeal to the Market Court against the FICORA's decision.

The Market Court issued its decision 383/16 on 27 June 2016.

The Market Court

According to section 8 paragraph 2 of Domain Name Act 228/2003 (amendments up to 397/2009 included), a domain name may be transferred to another party. The transfer shall be effective, when the transferee has made an application for the transfer in accordance with section 4 a and the holder of the domain name has consented to the transfer. [A transfer key is expressing the consent.]

According to section 12 paragraph 1 sub-paragraph 2 of the Act, FICORA may revoke a domain name, if there are weighty reasons to suspect that the domain name has been transferred to another party without the consent of the holder of the domain name, protected name or trademark, and the holder requests that the name be revoked, and the transferee has not presented an acceptable reason for its right within a period of two weeks. According to section 12 paragraph 2 of the Act, FICORA may transfer a domain name that has been revoked by virtue of paragraph 1 (2–4) to a party that has requested the revocation.

The Federation of Parishes provided evidence of the subcontract that existed between it and Agile. According to that evidence, Agile is taking care of the maintenance issues regarding the domain name. The court stated that there is a weighty reason to suspect that the domain name suurellasydamella.fi was transferred to Agile without the consent of the Federation of Parishes.

The court had to assess next whether Agile has presented an acceptable reason for its right.

Agile argued that the parties had conversations about the transfer and that the transfer was consensual. According to Agile, it was not a mistake that the Federation of Parishes gave the transfer key via email. The chief executive officer (CEO) of Agile told that he and a project leader B from the Federation of Parishes had conversations about the transfer during the year 2013 and it was clear to both parties that the domain name should belong to Agile. The CEO A told also that Agile could have fixed all the server problems without the transfer key and therefore the sole purpose of the transfer key was to transfer the domain name to Agile.

The project leader B confirmed that the parties had several conversations about the domain name during the year 2013. However, no conversations were held regarding the transfer of the domain name. B or the Chief information officer C, who sent the transfer key to B, did not even have the powers to authorize the transfer on behalf of the Federation of Parishes. B understood later that the transfer key was not needed in order to fix occurred problems regarding the name servers.

The Chief information officer C confirmed the statements presented by B.

The court stated that Agile has not provided any documentary evidence regarding the transfer. Agile has only referred to the consensus between the parties in the conversations in 2013. Agile could not clearly specify the moment when this consensus was reached. The statements of the parties are contradictory. Nothing, apart from the statement made by A, supports the claim that the domain name was transferred with the consent of the Federation of Parishes.

If it's not in a contract, it didn't happen!
Image courtesy of edar at Pixabay.com

The court stated that the sole purpose of a transfer key is to transfer a domain name from one registrar to another. The sending of the transfer key was not needed here in order to fix the problems regarding the name servers. However, this does not mean that the sole announcement of the transfer key to a party, who is responsible of taking care of the maintenance issues regarding the domain name, would authorize the party to transfer the domain name.

The court concluded that Agile has not presented an acceptable reason for its right.

The court reversed the earlier decision of FICORA and the case was sent back to FICORA for the revocation and the transfer of the domain name.

The court also ordered the defendant to pay the plaintiff's legal fees, in total 22 374,36 euros plus legal interest.

The Market Court: EUTM HANGOVER is Descriptive for Pizzas

noreply@blogger.com (Author - FinnIPR) — Tue, 12 Jul 2016 16:28:00 +0000

The Market Court declared invalid the registered European Union trademark HANGOVER pursuant to Article 7(1)(b-c) of the Community trademark Regulation No 207/2009 in its decision 375/16 on 17 June 2016. According to the court, the trademark is descriptive for the goods in question (class 30 for Pizzas) and therefore also devoid of any distinctive character.

After this the proprietor tried to argue that the trademark has become established, but the court did not find any evidence to support the claim and also dismissed the infringement claim (decision 376/15 on 17 June 2016).

Background

CPR Conseptor Oy (CPR) is the holder of a registered European Union trademark (EUTM) no. 012274734 HANGOVER (word), registered on 18 March 2014. The EUTM is registered in class 30 for Pizzas.

CPR has been using the word "HANGOVER" as a pizza name since 1996. According to the company, it has 12 franchised restaurants all over Finland. Between 2005 and 2014 it has sold approximately 200 000 "HANGOVER" pizzas. According to CPR's website, the pizza contains spicy salsa sauce, mozzarella, salami, crispy bacon, pickled cucumber and jalapeños.

CPR was not happy that some of its competitors were using names "Hangover" and "Hangover Express" for their pizzas. In 2015, CPR launched trademark infringement proceedings against the competitors.

The competitors filed a counterclaim, asserting that the plaintiff’s trademark registration shall be declared invalid pursuant to Article 7(1)(b-d) and Article 52(1)(b) or it shall be declared to be revoked pursuant to Article 51(1)(b) of the Community trademark Regulation No 207/2009.

There is nothing a good pizza can't cure!
Image courtesy of jarmoluk at Pixabay.com

The Market Court

First, the court assessed the invalidity claim (decision 375/16, issued on 17 June 2016).

According to Article 51(1)(a) of the Regulation:

1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

a) where the Community trade mark has been registered contrary to the provisions of Article 7.

The competitors argued that the EUTM has been registered contrary to Article 7(1)(b-d). According to Article 7(1)(b-d) of the Regulation:

1. The following shall not be registered:

(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

According to Article 7(2) of the Regulation, paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

The court referred to the case-law of the Court of Justice (CJ) and the General Court (GC):

The Article 7(1)(c) prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all. [See Joined Cases C-108/97, C-109/97 Windsurfing Chiemsee, para 25 and T-348/02 Quick, para 27.]

Furthermore the signs referred to by Article 7(1)(c) are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition.[See T-219/00 Ellos, para 28.]

The signs and indications referred to in Article 7(1)(c) are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought. [See T-19/04 Metso Paper Automation, para 24 and C-383/99 P Procter & Gamble, para 39.]

It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics. [See T-19/04 Metso Paper Automation, para 25.]

In order for OHIM to refuse to register a trade mark under Article 7(1)(c), it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. [See C-191/01 P Wrigley, para 32.]

The distinctiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign has been requested and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those products or services. [See T-348/02 Quick, para 29.]

In that regard, although it is clear from Article 7(1)(c) of Regulation that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1). In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(c). [See C-265/00 Campina Melkunie, paras 18-19, C-363/99 Koninklijke KPN Nederland, paras 67 and 86 and T-322/03 Telefon & Buch, para 111,]

The court stated that the word "hangover" ("krapula" in Finnish) refers to the condition following an abundant use of alcoholic beverages. Neither of the parties argued that the word would have some other generally known meanings.

The court considered that the relevant public, average consumers, consists of English speaking audience who understands the meaning of the word. The court stated that the Finnish consumers are part of that audience.

The competitors claimed that, inter alia, the EUTM HANGOVER designates the kind or at least one of the intended purposes of the goods [Article 7(1)(c)]. According to the companies, the relevant public understands pizza as a typical hangover food and hangover remedy.

The competitors provided also evidence of Google search results for a word "krapularuoka" ("hangover food" in English). Also a survey carried out by a Finnish newspaper in 2011 revealed that 33 percent of the 18 000 respondents think that pizza is the best hangover food. The competitors provided also evidence of several online discussion board and blog posts that are praising pizza as a hangover food or provide different recipes named, inter alia, "Hangover-pizza" or "Krapulapizza". Furthermore, the competitors referred to an interview (dated April 2013) with an executive from an online pizza ordering service. According to this executive, pizza is a hangover remedy for Finns and most orders occur immediately after holidays and on Sundays.

According to the court, the relevant Finnish public understands that the word "krapularuoka" refers to a food that people are eating, inter alia, as a remedy to ease the condition they have after an abundant use of alcoholic beverages. The court stated that, according to the relevant public, pizza is one of, if not the most, common hangover foods. The court continued and stated that this understanding has existed already before the registration of the EUTM HANGOVER.

The court referred again to CJ decision C-191/01 P Wrigley where CJ ruled that a sign must be refused if at least one of its possible meanings designates a characteristic of the goods or services concerned.

Therefore, the court stated that the mark HANGOVER has been descriptive for the goods already at the time of the registration and is thus contrary to Article 7(1)(c) of the Regulation. The mark is also devoid of any distinctive character with regard to the same goods and therefore also contrary to Article 7(1)(b) of the Regulation.

Since the request was found successful under Article 7(1)(b-c) of the Regulation it was not necessary to examine whether the additional invoked grounds for invalidation and revocation would apply.

The decision was not unanimous. One judge wrote a dissenting opinion. According to this judge, a hangover or eating pizza while having a hangover cannot be regarded as designating the characteristics of pizzas. The judge stated that, inter alia, pizza is just one of the salty and greasy foods that the people who are suffering from a hangover might find tempting. The judge concluded that the connection between the mark HANGOVER and pizzas is so vague that the EUTM HANGOVER does not go beyond the acceptable limits of suggestion. The mark is not devoid of any distinctive character either. The judge also dismissed the other invoked grounds for invalidation and revocation.

---

So the EUTM HANGOVER was declared invalid pursuant to Article 7(1)(c).

CPR still argued that the mark has been established through use. According to section 2 paragraph 1 of the Finnish Trademarks Act (7/1964), exclusive rights in a trademark may be acquired, even without registration, after the mark has become established. According to section 2 paragraph 3 of the Act, a trade symbol shall be considered established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.

The court assessed the establishment and a possible infringement in a decision 376/15, issued on 17 June 2016.

The chief executive officer (CEO) of CPR stated that the company has sold the "Hangover" pizzas in its restaurants since 1996. The company has 12 franchised restaurants all over Finland. According to the CEO, the company is selling approximately 100 000 - 200 000 "Hangover" pizzas per year. [This is contradicting the numbers CPR used in the claim. In the claim the company mentioned that it has sold, between the years 2005 and 2014, altogether 200 000 "Hangover" pizzas. The other option is that there is a typo in the decision.]

A witness G has told the court that he/she has known one of the franchised restaurants and its "Hangover" pizzas since the end of 1990s.

CPR also referred to its physical menus from the year 1996 and 2002 and menus that have been available on its website in 2003, 2009 and 2014. The Hangover pizza has been mentioned in all those menus.

CPR referred also to four different magazine or newspaper articles (dated 2006, 2007 and 2008) in which the Hangover pizza is mentioned.

The court stated that the company has proved how it has sold the pizza since 1996, how the pizza has been one of its most popular products and how the amount of franchised restaurants has grown during the years.

However, besides the sales figures, the company has not, according to the court, provided any evidence regarding the market share, the size of the investments made by the undertaking in promoting the mark or how reputed the mark is among the appropriate business or consumer circles in Finland.

The court continued and stated that one of the referred articles does not even mention the trademark HANGOVER or a pizza named Hangover. The other three articles mention the name but the company has not provided any information of the distribution figures. Furthermore, the content of the articles is quite insignificant. The court was not able to draw any conclusions regarding the reputation of the mark.

Therefore, the trademark has not become established.

The court dismissed the infringement claim.

The Market Court and WUNDER Case (Trademark with a Reputation and Infringement)

noreply@blogger.com (Author - FinnIPR) — Mon, 11 Jul 2016 14:08:00 +0000

The Market Court issued an interesting and long trademark decision 374/16 on 17 June 2016. According to the court, the defendant had infringed the trademarks of Julius Sämann Ltd. Julius Sämann Ltd is known for its WUNDER-BAUM air fresheners. The defendant was using similar signs for parody purposes, but the plaintiff and the court did not find it appropriate. The court ordered the defendant to pay reasonable compensation for the use of the marks, in total 6 375 euros plus legal interest and to pay compensation for all the damage caused by the infringement, in total 13 000 euros plus legal interest. Furthermore, the court ordered the defendant to pay the plaintiff's legal fees, in total 52 000 euros plus legal interest.

Background

Julius Sämann Ltd (JS) is the holder of registered European Union trademarks (EUTM):

- no. 004444791 WUNDER-BAUM (word), registered on 20 June 2006,
- no. 000091991 (figure), registered on 1 December 1998, and
- no. 003071305 (3D), registered on 11 May 2005

JS is also the holder of a national trademark no. 109644 (figure), registered on 20 November 1990.

All the mentioned marks are registered in class 5 for Air fresheners. The air fresheners of JS are most commonly seen hanging from rear-view mirrors of vehicles.

On 22 January 2014, JS sought to register a figure mark (application no. 012525507) as a EUTM for goods in class 3 (Air fragrancing preparations). This applied mark is visually identical with the EUTM no. 000091991.

No. 000091991.

No. 003071305.

No. 109644.

A, B and C are the members of a Finnish sketch comedy and musical trio called Justimus. The trio made a song and an album called Wunderboy and those were published by a record label Jiffel Entertainment Oy (Jiffel) in spring 2014. The trio has also a music video for the song Wunderboy, the video is available on YouTube (3,9 million views as of 10 July 2016) [Update on 30 August 2016: the official video was deleted from YouTube].

During the release of the album, the trio has marketed air fresheners in the shape of an evergreen tree. Some of the air fresheners were sold with the single and the album and some were sold in third-party stores. The trio has used marketing channels such as Facebook, Instagram and YouTube for the song and the album.

A Wunderboy air freshener
(an attachment from the court's decision).

JS was not amused about the creation of Wunderboy and launched trademark infringement proceedings against the trio and their record label in the Market Court. JS also brought an action for an interim injunction against the trio, but the court rejected the application in its decision 628/15 on 17 September 2015.

JS requested that the Market Court:

1. Affirms that the following trademarks have become established through use and have a reputation in Finland for Air fresheners:

- EUTM no. 004444791 WUNDER-BAUM (word),
- EUTM no. 000091991 (figure) and
- EUTM no. 003071305 (3D),
- national trademark no. 109644 (figure) and
- the figure mark represented in the EUTM application no. 012525507.

2. Affirms that a separate WUNDER-BAUM figure mark has become established through use.

3. Affirms that Jiffel, A, B and C have infringed its trademarks described above.

4. Affirms that Jiffel, A, B and C are guilty of unfair business practice because they have used signs that are similar to the trademarks that JS uses. Jiffel, A, B and C have used the signs in their marketing, products and packages.

5. Prohibits Jiffel, A, B and C from proceeding or repeating the infringement mentioned in the request no. 3.

6. Prohibits Jiffel, A, B and C from proceeding or repeating the unfair business practice mentioned in the request no. 4. The court should impose a conditional fine of 100 000 euros to reinforce the order.

7. Orders Jiffel to pay reasonable compensation for the use of the marks, in total 50 000 euros plus legal interest.

8. Orders Jiffel to pay compensation for all the damage caused by the infringement, in total 50 000 euros plus legal interest.

9. orders Jiffel to pay JS's legal fees, in total 78 272,21 euros plus legal interest.

---

The Market Court issued its decision 374/16 (186 paragraphs) on 17 June 2016.

The Market Court

The defendants raised first some procedural arguments, but the court dismissed these. After that it was time to assess the request no.1 of the plaintiff, i.e. do the trademarks of the plaintiff have a reputation? The court stated that there is no need to assess the establishment of the marks mentioned in the request no. 1 because the trademark registrations already provide exclusive rights for the plaintiff and the plaintiff has not claimed that the trademarks have become established for some other goods than the ones that are already covered by the registrations.

1. Do the trademarks of the plaintiff have a reputation?

The court stated that the concept of a trademark with a reputation is based on European Union legislation and on the rulings of the Court of Justice (CJ).

The court referred to the case-law of CJ. CJ has ruled in its decision C-375/97 General Motors (paras 26 and 27) that:

The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The court stated that the trademarked goods of the plaintiff are inexpensive ordinary commodities. The average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect.

The plaintiff had to prove that its trademarks have had a reputation in Finland by the time of the alleged infringement in spring 2014. Each mark was assessed separately.

1.1 The reputation of the EUTM no. 004444791 WUNDER-BAUM (word)

The plaintiff provided evidence that it has used the WUNDER-BAUM word mark in Finland since 1966. During the last ten years, it has sold approximately 650 000 - 1 000 000 WUNDER-BAUM air fresheners per year. The court stated that these facts are strong indications of reputation.

The WUNDER-BAUM air fresheners have had a high market share (76,7 percent) in Finland during the years 2012 and 2013 regarding car air fresheners. Before the years 2012-2013, the market share has been 69,5-75,5 percent. The court stated that these statistics do not provide a clear picture of the market share regarding all air fresheners but the high market share regarding car air fresheners does support the claim that the WUNDER-BAUM has a strong reputation also regarding air fresheners in general.

The company is using more than 20 000 euros per year on marketing. The court stated that these amounts are not very significant but one has to take into account the fact that the mark has been known and has been used for decades in Finland.

The plaintiff also provided a brand new market survey of 400 adults (dated 24 February 2016). Respondents were asked to mention a name of any car air freshener product and 62 percent of the respondents mentioned the name "Wunderbaum". Therefore, the spontaneous (or unaided) awareness was high. Moreover, 86 percent of the respondents chose the name Wunderbaum from a list that had five other product names. Therefore, the prompted (or aided) awareness was also high. The court stated that this survey does not provide a clear picture of the reputation regarding all air fresheners. Furthermore, the number of respondents is rather small. However, the survey still provides, according to the court, some information about the scale of the reputation. Even though the survey was done in 2016, two years after the conduct of the defendants, the court ruled that the survey is valid because the WUNDER-BAUM word mark has been in use for a long time and there was no reason to assume that any significant changes had occurred in the reputation of the mark. The court stated that the result of the survey is a strong indication of reputation.

The court concluded that the WUNDER-BAUM word mark has had a reputation in Finland since spring 2014 regarding air fresheners.

1.2 The reputation of the EUTM no. 000091991 (figure)

The plaintiff referred to the same evidence mentioned above. In the market survey, the respondents were shown a figure of an evergreen tree. According to the survey, 94 percent of the respondents found this figure familiar and 73 percent of the respondents answered "Wunderbaum" when they were asked to name the product. The figure shown in the survey was not exactly identical with the registered EUTM. There was a small white circle in the upper part of the tree and a bow tie pattern in the stem of the tree.

The court concluded that the figure mark has had a reputation in Finland since spring 2014, despite the debilitating factors in the market survey.

Because the applied mark represented in the EUTM application no. 012525507 is visually identical with the EUTM no. 000091991, there was no need to assess the reputation separately.

1.3 The reputation of the EUTM no. 003071305 (3D)

The plaintiff referred to the same evidence mentioned above. The court concluded that the 3D mark has had a reputation in Finland since spring 2014.

1.4 The reputation of the national trademark no. 109644 (figure)

The plaintiff referred to the same evidence mentioned above. The court concluded that the 3D mark has had a reputation in Finland since spring 2014 even though the diagonal text element WUNDER-BAUM is not used in all the WUNDER-BAUM air fresheners.

1.5 Conclusions

The court concluded that all the marks have had a reputation in Finland since spring 2014.

2. Has the separate WUNDER-BAUM figure mark become established through use?

According to section 2 paragraph 1 of the Finnish Trademarks Act (7/1964), exclusive rights in a trademark may be acquired, even without registration, after the mark has become established. According to section 2 paragraph 3 of the Act, a trade symbol shall be considered established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.

The court stated that the WUNDER-BAUM figure mark has, at least, a normal distinctiveness when taking into account the fact that the dominant word element WUNDER-BAUM has a reputation and good distinctiveness.

The separate WUNDER-BAUM figure mark
(an attachment from the court's decision).

The plaintiff provided evidence that the figure mark WUNDER-BAUM has been in use since 2009 for packages and marketing regarding air fresheners.

The plaintiff also referred to the high sales and high market share described above.

The court stated that the mark has been in use only five years before the spring 2014. According to the court, this fact does not support the establishment, but it does not, per se, deteriorate it either.

The court stated that the plaintiff has not provided any evidence, for example a market survey, that would help the court to assess whether the mark has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.

However, the court concluded that based on the distinctiveness and the very wide use of the mark, the figure mark WUNDER-BAUM has become established by spring 2014.

3. Is there an infringement?

3.1 Justimus air fresheners in the shape of an evergreen tree

3.1.1 The legal basis of the likelihood of confusion

According to Article 9(1)(b) of the Community trademark Regulation No 207/2009:

A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

Article 5(1)(b) of the Trademarks Directive 2008/95/EC contains a similar rule. The court stated that the Finnish Trademarks Act must be interpreted in accordance with the Trademarks Directive 2008/95/EC.

According to section 4 paragraph 1 of the Trademarks Act, the effect of the rights in a trade symbol provided for in this Act is that no one other than the proprietor of the trade symbol may use in his business any symbol liable to be confused with it for his goods, whether on the goods themselves or on their packaging, in advertising or commercial documents, or in any other way, including oral use.

According to section 6 of the Trademarks Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court then referred to the case-law of CJ.

CJ has ruled in its decision C-39/97 Canon (paras 26 and 29) that:

There is a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive where the public can be mistaken as to the origin of the goods or services in question. Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

CJ has ruled in its decision C-251/95 SABEL (paras 22-23) that:

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

CJ has ruled in its decision C-342/97 Lloyd (paras 19-20) that:

The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.

3.1.2. Likelihood of confusion between the EUTM no. 004444791 WUNDER-BAUM (word) and the wunderboy word mark

The defendants have used a word "wunderboy" for air fresheners in the shape of an evergreen tree.

The court assessed first the visual similarity. The court stated that the words WUNDER-BAUM and wunderboy both have the same beginning "wunder". The endings of the words are different in length, also the ending letters are different. The word WUNDER-BAUM has a hyphen whereas the word wunderboy does not. The court also stated that the font of the allegedly infringing sign is irrelevant. Also it does not matter whether the word is written with small letters or capital letters. Therefore, the marks have, to some extent, a visual similarity.

The court then moved on to assess the aural similarity. The court stated that the relevant Finnish public is pronouncing the beginning of the marks similarly ("wunderb"), whereas the pronunciation of the endings is different regarding the last sound ("-aum" and "-oi"). The court considered that the relevant Finnish public is paying more attention on the beginning of the marks. The hyphen has no relevance when assessing the aural similarity. Therefore, there is a high degree of aural similarity.

The court then moved on to assess the conceptual similarity. The court stated that the relevant Finnish public understands, mostly, also English and Swedish, but not German. However, it is likely that the public understands the meaning of the word "wunder" (wonder). On the other hand, it is not likely that the public understands the meaning of the word "baum" (tree). The relevant Finnish public understands that both marks are referring to positively "wonderful" qualities. Therefore, the marks have, to some extent, a conceptual similarity.

The court then moved on to assess the distinctiveness of the WUNDER-BAUM word mark. The court stated that the mark has a normal distinctiveness. However, the court stated that based on the very long-lasting and wide use of the mark, the WUNDER-BAUM word mark has acquired a good distinctiveness through use.

It was now time to draw a conclusion on the likelihood of confusion. The court concluded that based on the strong distinctiveness of the WUNDER-BAUM word mark, the aural similarity between the conflicting marks and the identical goods, there is a likelihood of confusion between the EUTM no. 004444791 WUNDER-BAUM (word) and the wunderboy word mark.

3.1.3 Likelihood of confusion between the EUTM no. 000091991 (figure), the EUTM no. 003071305 (3D) and the Justimus tree sign

The court considered first the likelihood of confusion between the EUTM no. 000091991 (figure) and the Justimus tree sign. The court stated that the two trees are very similar and it is difficult to notice any differences between the marks. Despite the other elements in the Justimus tree (the Justimus logo and the text "Wunderboy"), the two marks are very similar.

The court considered then the likelihood of confusion between the EUTM no. 003071305 (3D) and the Justimus tree sign. The court stated that the two marks are very similar. The Justimus tree has a hole in the upper part of the tree but this element is so secondary compared to the other elements that it does not diminish the similarity between the marks.

The marks are also conceptually similar: they are referring to an evergreen tree. Furthermore, the marks have identical goods.

The court concluded that there is a likelihood of confusion between the EUTM no. 000091991 (figure), EUTM no. 003071305 (3D) and the Justimus tree sign.

3.1.4 Likelihood of confusion between the national trademark no. 109644 (figure) and the Justimus tree sign

The court considered that the two marks are very similar. However, there are some differences. The Justimus tree has slightly rounder branch tips compared to the registered national mark. The Justimus tree sign has also a text element "Wunderboy" placed inside the rectangle below the tree. Also the text elements placed inside the tree are different ("WUNDER-BAUM" vs. "AMISPOP NEVER STOP"). The court considered that the visual appearance of these text elements is, however, very similar. The texts have been placed diagonally in two lines and have a very similar font.

The court then considered the aural similarity. The registered national mark has only one text element whereas the Justimus tree sign has two. There is a minimal degree of aural similarity.

The court then moved on to assess the conceptual similarity. The marks have some similarity regarding the text elements "wunder-baum" and "wunderboy". However, the text element "amispop never stop" is diminishing the similarity. The text element is a slogan that is admiring a certain type of pop music. Both marks have a tree element and those elements are very similar. Therefore, the marks have, to some extent, a conceptual similarity.

The court then moved on to assess the distinctiveness of the registered national trademark. The court stated that the mark has a normal distinctiveness. However, the mark also has a reputation as described above and it has acquired a good distinctiveness through use.

The court concluded that there is a likelihood of confusion between the national trademark no. 109644 (figure) and the Justimus tree sign.

3.1.5 Likelihood of confusion between the established WUNDER-BAUM figure mark and the WUNDERBOY figure mark

The visual appearance of the marks is very similar. Both marks have a red arched rectangle and below the rectangle there is a black line. The tone of the color red is slightly different. The text elements have a slight difference in their wording, but the font is very similar. Therefore, there is a very high degree of visual similarity.

The WUNDERBOY figure mark
(an attachment from the court's decision).

The court then moved on to assess the aural similarity and referred to the assessment above (3.1.2) and stated that there is a high degree of aural similarity.

The court then moved on to assess the conceptual similarity and referred again to the assessment above (3.1.2) and stated that the marks have, to some extent, a conceptual similarity.

The court concluded that there is a likelihood of confusion between the established WUNDER-BAUM figure mark and the WUNDERBOY figure mark.

3.2 The marketing of the Wunderboy album and the song

3.2.1 The scope of protection afforded to marks with reputation

According to Article 9(1)(c) of the Community trademark Regulation No 207/2009:

A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

Article 5(2) of the Trademarks Directive contains a similar rule. The court stated again that the Finnish Trademarks Act must be interpreted in accordance with the Trademarks Directive. Section 6 paragraph 2 of the Trademarks Act contains a rule regarding the scope of protection afforded to marks with reputation.

The court then referred to the case-law of CJ. CJ has ruled, in essence, that it is sufficient for the degree of similarity between the mark with a reputation and the other sign to have the effect that the relevant section of the public establishes a link between the sign and the mark. No likelihood of confusion is required between them on the part of the relevant section of the public (see C-408/01 Adidas Benelux, para 31).

The existence of the link mentioned above must be assessed globally, taking into account all factors relevant to the circumstances of the case. According to C-252/07 Intel (para 42), those factors include:

- The degree of similarity between the conflicting marks, in particular visual, aural or conceptual similarity (see C-408/01 Adidas Benelux, para 28).
- 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;
- the existence of the likelihood of confusion on the part of the public.¨

3.2.2 The use of signs including the word "wunderboy"

So the court had to assess first whether there is a similarity link between the conflicting marks. If such link exists, the court has to then asses whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the plaintiff's trademarks (see C-487/07 L'Oréal, paras 37-38).

The defendants have used the wunderboy word mark and also the WUNDERBOY figure mark when they have marketed the album and the song.

The court stated that based on, inter alia, the good distinctiveness of the WUNDER-BAUM word mark and the degree of similarity, the relevant section of the public establishes a link between the reputed WUNDER-BAUM word mark, the WUNDERBOY figure mark and the wunderboy word mark.

Now the court had to assess whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the plaintiff's trademarks. One of those three types of injury is enough for the rule to apply.

CJ has ruled in its decisions C-252/07 Intel (paras 67-69) and C-487/07 L'Oréal (para 44) that:

As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them.

CJ has ruled in its decision C-487/07 L'Oréal (paras 41, 44 and 49) that:

As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.

In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned.

In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.

The defendants have used the WUNDERBOY figure mark when they have promoted their music. As mentioned above, this figure mark has a very high degree of visual similarity with the established WUNDER-BAUM figure mark. The WUNDERBOY figure mark contains a text element "wunderboy" that is similar with the WUNDER-BAUM word mark. According to the court, there is a strong association, based on the way the defendants have used the mark, between the WUNDERBOY figure mark and the reputed WUNDER-BAUM word mark. In their own Facebook page, the defendants have even promised to deliver "their own wunderbaum" to the ones who have pre-ordered the album.

According to the court, the defendants have, while using the WUNDERBOY figure mark, aimed to benefit from the distinctiveness and the reputation of the WUNDER-BAUM word mark. Therefore, the sign has taken unfair advantage of the distinctive character or the repute of the mark.

The plaintiff argued that also the use of the wunderboy word mark, as such, has taken unfair advantage of the distinctive character or the repute of the WUNDER-BAUM word mark. The court rejected this argument and stated that the use of the wunderboy word mark, as such, without any figures similar to the WUNDER-BAUM figure mark, does not establish as strong association as the WUNDERBOY figure mark does. Therefore, the wunderboy word mark has not taken unfair advantage of the distinctive character or the repute of the WUNDER-BAUM word mark.

The plaintiff argued that the use of the wunderboy word mark is, however, detrimental to the distinctive character or the repute of the WUNDER-BAUM word mark. According to the plaintiff, there is a danger that the relevant section of the public starts to understand that a text element beginning with the expression "WUNDERB" is generic for the car air fresheners. Furthermore, the defendants' song and the music video includes use of alcohol in a car and sexual innuendo involving minors and violence.

The court rejected this. The court stated that the defendants have, mainly, used the wunderboy word mark in order to promote the song and the album. This kind of use does not cause detriment to the distinctive character or the repute of the WUNDER-BAUM word mark. According to the court, the association between the marks is not strong enough.

Therefore, the use of the wunderboy word mark, as such, in order to promote the song and the album, has not infringed the WUNDER-BAUM word mark.

3.2.3 The use of the Justimus tree sign

Again, the court had to assess first whether there is a similarity link between the conflicting marks. If such link exists, the court has to then asses whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the plaintiff's trademarks.

The defendants have used the Justimus tree sign when they have marketed the album and the song.

The court referred to the assessment above (3.1.3) regarding the likelihood of confusion between the EUTM no. 000091991 (figure) and the Justimus tree sign. In that assessment it was stated that there is a high degree of similarity between the two marks.

It is true that the corresponding goods are very different. However, according to the court, the average consumer of these products (air fresheners vs. songs and albums) concerned is deemed to be reasonably well informed and reasonably observant and circumspect, and it is likely that the reputed mark of the plaintiff is known among the customers who buy music from the defendants. Therefore, the court stated that the relevant section of the public establishes a link between the reputed EUTM no. 000091991 (figure) and the Justimus tree sign.

Now the court had to assess whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EUTM no. 000091991 (figure). One of those three types of injury is enough for the rule to apply.

The court stated that since the two marks are so similar, it is obvious that the defendants have benefited from the distinctiveness and the reputation of the EUTM no. 000091991 (figure). In their own Facebook page, the defendants have even promised to deliver "their own wunderbaum" to the ones who have pre-ordered the album. Therefore, the Justimus tree sign has taken unfair advantage of the distinctive character or the repute of the EUTM no. 000091991 (figure)

3.2.4 The character dressed in a tree costume in the Wunderboy music video

Amusingly enough, the defendants' music video includes a character dressed in a tree costume. The character is dancing in the video. There is a text "WUNDER-BOY" written on the costume. The plaintiff argued that the use of this character is infringing the reputed national trademark no. 109644 (figure).

Like two peas in a pod?

The court stated that the purpose of the music video is to promote the song and the album. The court continued by stating that the relevant public will associate the character with the reputed national trademark no. 109644 (figure) even though the tree costume is only roughly similar to the trademark. However, the dominant elements are the same: an evergreen tree and a text element placed diagonally in two lines. Therefore, the use of the character has taken unfair advantage of the distinctive character or the repute of the reputed national trademark no. 109644 (figure).

3.2.5 Parody argument

The defendants did not claim that they had "due cause" to use the infringing signs. However, they argued that the use of the signs was merely a parody. They explained that the song and the music video makes fun of a certain type of young men and the use of air fresheners in the shape of an evergreen tree is a part of the lifestyle of those men.

According to the court, the use of signs, that are identical or similar to another's trademarks, in marketing or in other business, is not justifiable only because of the product promoted by the signs, for example an album or a song, includes humorous references to a phenomenon that may also have some connection with the trademarks of another.

[It is somewhat disappointing that the parody assessment is so short. Trademark parodies are quite rare and it would have been interesting to see a more profound assessment in this respect.]

3.3 Conclusions

Therefore, the defendants have infringed the trademarks of the plaintiff by using the following signs for air fresheners:

- the wunderboy word mark,

- the Justimus tree sign and

- the WUNDERBOY figure mark.

Furthermore, the defendants have infringed the trademarks of the plaintiff by using the following signs for the song and the album:

- the WUNDERBOY figure mark,

- the Justimus tree sign and
- the character dressed in a tree costume.

The court prohibited the defendants from proceeding with or repeating the acts.

4. Compensation and Damages

4.1 Assessment

According to section 38 paragraphs 2 and 3 of the Trademarks Act, any person who deliberately or due to negligence infringes the right to a trade symbol shall be obliged to pay the aggrieved party a reasonable compensation for the use of the symbol and a compensation for all the damage caused by the infringement. If the negligence has only been slight, the compensation for the damage may be adjusted. Even if no negligence is found, the infringer is obliged to pay a reasonable compensation for the use of the symbol.

According to Government Bill 26/2006 of the Act, the reasonable compensation for the use of the symbol must be paid even if there is no financial loss for the infringed party. The amount should be calculated on the basis of a licence fee.

The plaintiff requested the court to order the defendant to pay compensation for the use of the marks, in total 50 000 euros plus legal interest. According to the plaintiff, 9 000 euros of that amount is the amount of the license fee and the remaining 41 000 euros is the amount that the defendants have otherwise benefited in the form of concerts, other albums and other merchandise.

The court had to assess first the reasonable compensation for the use of the plaintiff's trademarks. It had to determine the amount of profit that the defendants had gained from the sales of products bearing the infringing signs. The court had to then determine the amount of the license fee. After that it had to assess whether there is a reason to order the defendant to pay compensation also from the allegedly acquired benefit concerning the sales of concerts, other albums and other merchandise.

According to the defendants, 9 600 air fresheners were sold to third-party stores and the defendant profited 11 308,80 euros from that (1,178 euros per air freshener). Furthermore, 350 air fresheners were sold to the ones who had pre-ordered the album. However, the defendant provided evidence that 8 041 air fresheners of the 9 600 that were sold to the third-party stores were destroyed after the request from the defendant. The defendant argued that this should decrease the amount of profit. The court rejected this because the defendant did not claim that it had refunded any of the 11 308,80 euros paid by the third-party stores. The court stated that the defendant has profited approximately 12 000 euros from the sales of the Justimus air fresheners.

The court stated also that the defendant has profited 25 200 euros from the sales of the physical Wunderboy albums.

The court stated also that the defendant has profited approximately 5 520 euros from the sales of the digital Wunderboy products.

According to the court, the total sales were approximately 42 500 euros.

The plaintiff provided evidence that it has normally used a royalty rate of 10 percent. The plaintiff argued that in this case the royalty rate should be 20 percent because of the detrimental use of the signs. The court considered that a royalty rate of 15 percent is suitable in this case when taking into account the nature of the use and that the use has infringed several trademarks.

The court had to consider then whether there is a reason to order the defendant to pay compensation also from the allegedly acquired benefit concerning the sales of concerts, other albums and other merchandise. The court rejected this request as unfounded. According to the court, the plaintiff did not, inter alia, provide any concrete evidence of the alleged profit that the defendants had gained this way.

Therefore, the court ordered the defendant to pay compensation for the use of the marks, in total 6 375 euros plus legal interest.

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The plaintiff reguested the court to order the defendant to pay compensation for all the damage caused by the infringement, in total 50 000 euros plus legal interest.

The court stated that the defendant was aware of the trademarks of the plaintiff at the time when it was planning to promote the Wunderboy album and the song. Therefore, it has acted, at least, due to negligence that is not slight.

The plaintiff argued that the Justimus air fresheners have caused lost sales, in total 13 000 euros.

The plaintiff argued also that the conduct of the defendants has caused detriment to the distinctive character and the goodwill of its trademarks. The defendants' song and the music video includes use of alcohol in a car and sexual innuendo involving minors and violence.

According to Government Bill 26/2006 of the Trademarks Act, the damages consist of the losses of the proprietor. The proprietor has to provide evidence of these losses. Proprietors usually seek recovery of their lost profits. It is often difficult to assess the amount of lost profits, but for example falls in sales can provide evidence of the lost profits. It is even more difficult to estimate the detriment to the distinctive character and the goodwill of the trademarks.

The court stated that the conduct of the defendants has caused some lost sales. This is mainly based on the profits gained by the defendants. However, 8 041 air fresheners were destroyed and less than 3 000 air fresheners ended up to the consumers. Therefore, the court assessed that the lost profits are 3 000 euros.

The plaintiff could not provide evidence of the detriment to the distinctive character and the goodwill of the trademarks. However, the court stated that the conduct of the defendants has, to some extent, caused detriment to the trademarks. The court emphasized that the use of the infringing signs has, especially in the music video, received a large audience.

According to chapter 17 section 2 paragraph 3 of the Code of Judicial Procedure (4/1734, as amended in 2016), if credible evidence is not available regarding the amount of a claim under private law or such evidence is obtainable only with difficulty or, in view of the nature of the case, with unreasonable cost or difficulty, the court shall assess the amount. The court assessed that the amount is 10 000 euros.

4.2 Conclusions

The court ordered the defendant to pay compensation for the use of the marks, in total 6 375 euros plus legal interest.

Furthermore, the court ordered the defendant to pay compensation for all the damage caused by the infringement, in total 13 000 euros plus legal interest.

5. Are the defendants guilty of unfair business practice (reputation parasitism)?

The plaintiff requested the court to affirm that the defendants are guilty of unfair business practice because they have used signs, that are similar to the trademarks that the plaintiff uses, in their marketing, products and packages. The plaintiff requested the court to prohibit the defendants from proceeding or repeating unfair business practice mentioned in the request no. 4. The court should impose a conditional fine of 100 000 euros to reinforce the order.

The court stated that there is no need to assess the requirements of unfair business practice since the court has affirmed the requests no. 3 and 5 (trademark infringement and prohibition from proceeding with or repeating the act). The plaintiff has referred to the same conduct that has been assessed above regarding the trademark infringement.

The plaintiff specified its requests and added that the court should still assess whether the use of the word "wunderboy" in the song Wunderboy can be considered as unfair business practice. Furhermore, according to the plaintiff, the court should assess whether the use of "wunderboy", as such, in order to promote the song and the album, is against unfair business practice. [The court had found earlier that the use of the wunderboy word mark, as such, in order to promote the song and the album, has not infringed the reputed WUNDER-BAUM word mark.]

The court agreed to assess this updated request.

According to section 1 paragraph 1 of the Unfair Business Practices Act (1061/1978), good business practice may not be violated nor may practices that are otherwise unfair to other entrepreneurs be used in business.

It has been ruled in the Finnish case-law that the section 1 paragraph 1 of the Unfair Business Practices Act prohibits anyone from taking undue advantage of another's goodwill (in trademarks, products, business concepts etc). This is also known as 'reputation parasitism' ('maineen norkkiminen' in Finnish).

Also according to Article 15 of the ICC Code on Advertising Practice, marketing communications should not in any way take undue advantage of another firm's, individual's or institution's goodwill in its name, brands or other intellectual property, or take advantage of the goodwill earned by other marketing campaigns without prior consent.

The court stated that there are two requirements for reputation parasitism. Firstly, the alleged victim mark of the reputation parasitism has to be well-known in the market and have a reputation. Secondly, there has to be an association between the conflicting marks and the one who has created the association is aiming to exploit the goodwill of the other mark. The court added that the reputation parasitism does not require, per se, that the conduct misleads the average consumer about the commercial origin of the product.

The court found earlier that the WUNDER-BAUM word mark has a reputation in Finland since spring 2014. Therefore it has, according to the court, the goodwill that the assessment of the reputation parasitism requires.

Now the court had to assess whether the defendants have, while using the word "wunderboy", created an association between the word "wunderboy" and the WUNDER-BAUM word mark among the reasonably well-informed and reasonably observant and circumspect average consumers.

The court assessed first the use of the word "wunderboy" in the song. The court examined the lyrics of the song and stated that the word is clearly referring to a young man who is a member of this certain subculture. The court considered that the word is not, as such, referring to the WUNDER-BAUM word mark or to the products of the plaintiff. Therefore, there is no reputation parasitism in this regard.

The court assessed then the use of the word "wunderboy" in the promotion of the song and the album. The court admitted that the use of the word "wunderboy" can create an association between the word and the WUNDER-BAUM word mark and the air fresheners sold by the word mark. However, taking into account, inter alia, the meaning that the word "wunderboy" has in the song, this association is considered to be very weak. Therefore, there is no reputation parasitism in this regard either.

6. Verdict

1. The court affirmed that the following trademarks have a reputation in Finland for Air fresheners since spring 2014:

- EUTM no. 004444791 WUNDER-BAUM (word),
- EUTM no. 000091991 (figure),
- EUTM no. 003071305 (3D),
- national trademark no. 109644 (figure) and
- the figure mark represented in the EUTM application no. 012525507.

2. The court affirmed that the separate WUNDER-BAUM figure mark has become established through use since spring 2014.

3. The court affirmed that the defendants have infringed the trademarks described above when they have marketed and sold the air fresheners.

4. The court affirmed that the defendants have infringed the reputed trademarks described above when they have marketed and sold the song and the album.

5. The court prohibited the defendants from proceeding with or repeating the act described in 3-4.

6. The court ordered the defendant to pay reasonable compensation for the use of the marks, in total 6 375 euros plus legal interest.

7. The court ordered the defendant to pay compensation for all the damage caused by the infringement, in total 13 000 euros plus legal interest.

8. The court ordered the defendant to pay the plaintiff's legal fees, in total 52 000 euros plus legal interest.

9. The court dismissed the other requests.

The Market Court and an Interim Injunction (Alleged Utility Model Registration in Bad Faith)

noreply@blogger.com (Author - FinnIPR) — Thu, 07 Jul 2016 17:11:00 +0000

Background

In November 2012, a company B (B) filed a utility model application for an invention 'Attachment arrangement'. The invention consisted of independent claim 1 and dependent claims 2-5. The Finnish Patent and Registration Office (PRH) registered the utility model (no. 9968) on 28 January 2013.

Utility Model Registration no. 9968.

In 2014, a company A (A) lodged an invalidity claim against the registered utility model. The A provided prior art documents D1-D8. In 2015, the A added a prior art document D9. Basically the A wanted to prove that it has been selling an apparatus that is identical with the utility model and that these sales have occurred before the B filed the utility model application in 2012.

In 2015, PRH confirmed in its decision that the documents D2-D4 and D9 cover the apparatus described in the claim 1 of the registered utility model no. 9968. However, PRH decided to reject the invalidation claim because the documents D2-D4 and D9 are based on a communication between two companies and an internal activity in those companies. This kind of communication or activity is not considered to be a material that has become available to the public.

The documents D2-D4 provided proof of how the A has ordered a company C (C) to manufacture and deliver a mold of an apparatus that is, allegedly, similar to the apparatus described in the claim 1 of the registered utility model. In the document D9, the A provided evidence of how it has started to manufacture the apparatus based on a mold ordered from the C and provided information on the sales of that apparatus. All this had occurred before the B filed the utility model application in 2012.

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In 2016, the A brought an action for an interim injunction against the B in the Market Court. The A requested the court to order that a bailiff, or an expert on behalf of the bailiff, will carry out the following measures in the business premises of the B:

1. Investigate and copy or otherwise preserve:

a) the received and sent emails, including attachments, inter alia, (i) between the B and the C.

b) electronic documents and other files regarding the registered utility model no. 9968 or regarding other apparatus similar to the utility model.

2. Seize the physical papers and drawings regarding the registered utility model no. 9968 or regarding other apparatus similar to the utility model.

3. Seize all the prototypes, if the B has such, that the C has manufactured for the A.

Furthermore, the A requested the court to order the injunction without giving the B opportunity to be heard.

The Market Court issued its decision 325/16 on 3 June 2016.

The Market Court

The court first clarified the legal basis of the interim injunction application.

According to section 1 paragraph 2 of the Act on Securing Evidence in Civil Matters concerning Industrial Rights and Copyrights (344/2000), the Act is applied to a situation in which, inter alia, an entrepreneur has unjustifiably used or revealed a business secret, a technical model or technical instructions.

According to section 2 of the Act, the court can give a seizure order concerning any material that can have a significance in the case in question. The opposing party shall not suffer undue inconvenience in comparison with the benefit to be secured (comparison of interest / unreasonable inconvenience). According to section 3 of the Act, the rightholder needs to demonstrate that it is probable that he or she has a right that is enforceable against the opposing party, and the right is being infringed or that such infringement is imminent (claim requirement). Furthermore, there is a danger that the opposing party, or the one who has the material, conceals, destroys or hands over the evidence or in some other manner endangers the preservation of the evidence (danger requirement).

According to Government Bill 119/1999 of the Act, the applicant has to specify the object of the injunction. One has to know what to look for during the enforcement of the injunction. Furthermore, the specification is needed so that the court can assess whether the object has a significance as an evidence. The applicant has to specify the object of the injunction so precisely that the bailiff can carry out the enforcement without further consideration.

According to section 4 of the Act, the court can, on request, order the interim injunction without giving the defendant opportunity to be heard, if the purpose of the injunction is otherwise endangered.

According to section 5 paragraph 1 of the Act, a bailiff can use, if necessary, an unchallengeable expert. The applicant of the injunction, or his/her representative, can act as an expert if it is likely that he/she will not unjustifiably obtain any other business or trade secrets.

1. Claim requirement

The A provided evidence that the figure eight of the registered utility model no. 9968 is identical with the drawings that the A sent to the C in 2010. The court stated that the A has an enforceable right against the B and the claim requirement is therefore fulfilled. The court stated also that at least part of the material, targeted by the injunction, has a significance in the case.

The A argued that the B has received material from the C and used it in the utility model application. Therefore, the email correspondence between the B and the C may have a significance as an evidence. The court agreed and stated that the relevant time period is between 2010 and 28 November 2012.

Otherwise the court rejected the requests no. 1-3 because it could not evaluate whether the material targeted in those requests would have a significance regarding the unjustifiable use or reveal of a technical model, i.e. the requests were not specific enough.

Utility Model Registration no. 9968, Fig. 8.

2. Danger requirement

The court referred to earlier Supreme Court rulings 1994:132 and 1994:133 where the Supreme Court has ruled that the danger requirement is fulfilled if the danger is not very improbable based on the circumstances in the case.

According to the A, it is likely that the B has some of the targeted material described in the interim injunction application. Taking into account the alleged bad faith behavior described above, there is a danger that the B conceals, destroys or hands over the evidence or in some other manner endangers the preservation of the evidence before the main proceedings. The court agreed and stated that the danger requirement is sufficiently fulfilled.

3. Comparison of interest / unreasonable inconvenience

The court considered that, as mentioned above, it is justifiable to order the interim injunction only regarding the request 1 (a)(i), i.e. the email correspondence, including attachments, between the B and the C between 2010 and 28 November 2012. Furthermore, the material is ordered to be left in the bailiff's possession. Since the injunction is ordered in a restrictive form like this, the opposing party B is not going to suffer undue inconvenience in comparison with the benefit to be secured. The comparison of interest / unreasonable inconvenience requirement is thus fulfilled.

The court also considered that there is a reason to order the interim injunction without giving the defendant opportunity to be heard.

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Therefore, the Market Court ordered a bailiff to carry out the following measure in the business premises of the B:

- Investigate and copy or otherwise preserve the received and sent emails, including attachments, between the B and the C between 2010 and 28 November 2012.

The bailiff can use, if it is necessary, an unchallengeable expert who is obliged to follow the rules of confidentiality and prohibition of exploitation.

Enforcement and security

A prerequisite for the entry into force of the interim injunction is that the applicant applies for enforcement of a precautionary measure as provided in chapter 8 of the Enforcement Code (705/2007).

According to chapter 8 section 2 paragraph 1 of the Enforcement Code, enforcement of a precautionary measure requires that the applicant lodges with the bailiff security for loss that the respondent may incur as a result of the precautionary measure.

The A has to apply the enforcement not later than 13 June 2016. Furthermore, the A has to deliver a document covering the description and results of the enforcement not later than 20 June 2016.

The Market Court Orders Defendant to Pay in a BitTorrent File-sharing Case

noreply@blogger.com (Author - FinnIPR) — Tue, 05 Jul 2016 17:21:00 +0000

The Market Court issued an important online piracy decision 419/16 on 4 July 2016. According to the court, the defendant had shared a movie and ten episodes of a tv-show by using BitTorrent file-sharing application. The court ordered the defendant to pay 600 euros in compensation (100 euros per shared movie and 50 euros per shared tv-show episode). In addition to that, the court ordered the defendant to pay the plaintiffs' legal fees, in total 31 762,16 euros plus legal interest. The defendant's own legal fees were in total 21 714,32 euros.

I wrote about the background of this case earlier in this blog (here).

A law firm, representing the rightsholders of the movie 'A Walk Among the Tombstones' and the tv-show 'Black Sails', sent a settlement letter to a person X on 20 April 2015. In that settlement letter, the rightsholders held the X liable for sharing the movie and ten episodes of the tv-show between 3 January and 29 March 2015. According to the rightsholders, the X was using BitTorrent file-sharing application while committing these infringing acts. The IP address of the internet subscriber (the X) was logged by a technology company that had monitored the BitTorrent traffic. The law firm then, acting on behalf of the rightsholders, asked the Market Court to order the relevant internet service provider (ISP) to give up the personal details of the internet subscriber (the X). In the settlement letter, the law firm asked the X to pay a settlement sum of 2 100 euros or otherwise there is a risk that the X will get sued by the rightsholders and the compensation demands will be higher.

The same law firm has been sending settlement letters for more than a year and approximately thousands of Finnish internet subscribers have received a settlement letter from the firm.

Unwelcome mail from a law firm.
Image courtesy of OpenClipartVectors at Pixabay.com

In October 2015, the rightsholders took three of these settlement letter cases to the Market Court as civil disputes after the letter receiver did not pay the settlement offer. Two of the cases were settled out of the court with a confidentiality clause. The case regarding the X proceeded all the way to the main hearing, which was held in the beginning of May 2016.

In the case regarding the X (the defendant), the rightsholders (the plaintiffs) requested the court to:

1. order the defendant to pay compensation of 7 500 euros plus legal interest for making ten episodes of the tv-show available to the public by using BitTorrent file-sharing application.

2. order the defendant to pay compensation of 1 000 euros plus legal interest for making the movie available to the public by using BitTorrent file-sharing application.

3. order the defendant to pay the plaintiff's legal fees, in total 31 762,16 euros plus legal interest.

It is important to mention that in this case the plaintiffs are not seeking compensation for the reproduction of the works. It was agreed by both parties that the compensation is going to be determined only in the context of making the works available to the public.

The Market Court

The court first clarified the legal basis of the dispute and gave a thorough explanation of the BitTorrent protocol and how it works.

According to section 2 paragraph 1 of the Copyright Act (404/1961), copyright shall provide the exclusive right to control a work by reproducing it and by making it available to the public, in the original form or in an altered form, in translation or in adaptation, in another literary or artistic form, or by any other technique.

According to section 2 paragraph 3 of the Act, a work is made available to the public when, inter alia, it is communicated to the public by wire or wireless means, including communication in a way which enables members of the public to access the work from a place and at a time individually chosen by them.

The defendant argued that the plaintiffs have not provided enough evidence to prove that the IP address mentioned by the plaintiffs was used by the defendant at the time of the infringing acts. And even if the IP address was used by the defendant, the defendant denied that he has downloaded or shared any of the works. According to the defendant, he can not be held liable for any infringing acts that were carried out by someone else who was using the defendant's wireless internet connection.

Therefore, the court had to assess first whether the plaintiffs have provided enough evidence that the defendant was the user of the IP address at the time of the infringing acts. If this is the case, then the court has to assess whether there is enough evidence to prove that the defendant has personally downloaded and, most importantly, communicated the works to the public.

Was the defendant the user of the IP address at the time of the infringing acts?

The plaintiffs referred to the earlier Market Court decisions 93/15, issued on 12 February 2015, and 170/15, issued on 10 March 2015. In those decisions, the court has, pursuant to the section 60 a of the Copyright Act, ordered the relevant ISP to give up the personal details of the internet subscriber who used the IP address 84.250.xx.xxx at the time of the infringing acts between 3 January 2015 and 5 February 2015. The defendant was the user of that IP address.

The defendant stated that, according to the different articles in the newspapers and on the internet, different ISPs are known to have done several mistakes when they have identified the user of an IP address.

The plaintiffs provided evidence that they had requested the ISP to check the accuracy of the details. According to the ISP, two of its workers have checked the details again and they have confirmed that it was the defendant who was the user of the IP address at the time of the infringing acts.

The court stated that, according to the evidence shown in the case, the defendant was the user of the IP address at the time of the infringing acts.

Technical monitoring of the IP address and the time period of the infringing acts

The court provided a thorough explanation on how the IP address of the defendant was logged by the technology company and how the BitTorrent traffic was monitored at the time of the infringing acts. The defendant has not contested the log information.

Interestingly enough, the plaintiffs were able to convince the court that the IP address of the defendant was used to download and share the infringed works between 3 January 2015 and 29 March 2015, even though the last court ordered identification done by the ISP was on 5 February 2015. The reason why the court was convinced is based on the following facts:

- The technology company had continued to monitor the same IP address after the last court ordered identification done by the ISP on 5 February. According to the technology company, the infringing acts continued until 29 March 2015.

- According to witness B, the file-sharing that occurred between 3 January and 29 March 2015 was carried out from the same computer, because the IP address and the used BitTorrent client remained the same during that period of time.

- According to the plaintiffs, the user of the IP address had used a BitTorrent client named qBittorrent, and its version 3.1.0, between 3 January and 29 March 2015. The plaintiffs argued that this client is rather rare. According to statistics of the technology company, the qBittorrent client covers only 3,2 percent of all the monitored BitTorrent clients in April 2016.

- The BitTorrent clients have a userhash-code that is created randomly and it changes whenever the BitTorrent client is launched. According to witness B, the userhash-code changed only four times during the several months.

- The user of the IP address downloaded the episodes in their chronological order during the time period between 3 January and 29 March 2015.

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Therefore, the court stated that the IP address has belonged to the same internet subscriber between 3 January 2015 and 29 March 2015 and the same computer has been used and the same person has done the infringing acts during that period of time [I understand that the same computer has probably been used, but in my opinion it is not clear that, according to the evidence, the same person has been using the computer...].

Has the defendant personally communicated the works to the public?

The court had to assess now whether the defendant has personally, according to the evidence provided by the plaintiffs, communicated the works to the public.

The plaintiffs showed messages posted on two separate online discussion boards on 24 April 2015. The first online discussion board is 'Muropaketti' and the second is 'Ylilauta'. According to the plaintiffs, the writer of those messages has to be the defendant because the messages included an image of a settlement letter that had many identical details as the settlement letter that the defendant had received.

The message in Muropaketti, written by a registered username, included an image of a settlement letter that had the same number of pages, the same infringed works, the same timestamps regarding the infringing acts and the same layout of the text as the settlement letter that the defendant had received.

The defendant did not deny that he was the writer of the message in Muropaketti. In the message, the defendant wrote that he had received a settlement letter and was pondering different options. In that message, the defendant did not, in my opinion, clearly confess or deny that he had downloaded or shared the infringing material. Here is a FinnIPR translation of the message:

"I received a suspicious letter from a law firm. I was curious and immediately opened the letter because I think I have heard the name of the firm before, I got a bad vibe from the name. I should have at least waited until the evening. They claimed in the letter that I had downloaded some tv-show and demanded two thousand euros within two weeks or otherwise there will be some sort of follow-up. Rationally thinking I have two options.

1. To submit and pay. With my salary it would be annoying to pay the two thousand euros. This would encourage the law firm to continue doing this. It would be annoying to give up so easily.

2. No to pay and ignore the extortion. Should I wait for the preliminary investigation - As a defense, I have an open wireless network; Should I wait that the police will come and take my computers - Are they going to take all the laptops, desktop computers and iPads; To wait what the prosecutor says - Hopefully the preliminary investigation is not going to take long, especially when I have crypted material; To wait how it goes in the court - Can I get a free lawyer just like in the USA; I think morally it would better to choose this option no.2, even though the fight would take long. The minimum requirement is a realistic chance to win the case.

Can you tell me how the second option goes and how much I can lose in the worst-case scenario? What would you do?"

In that message, the defendant has, in the plaintiffs' opinion, confessed the infringing acts.

On the same day, 24 April 2015, someone has written in the other discussion board, Ylilauta, that "It did not work to limit the seed [the sharing] to 0 kB/s...". The message included an image of a settlement letter that had the same reference number as the settlement letter that the defendant had received. According to the plaintiffs, the writer of that message has to have been the defendant. The court agreed on this issue.

The court stated that, in the messages described above, the defendant has not expressed that the settlement letter was sent to a wrong person or that he has not communicated the mentioned works to the public. The defendant has only pondered what he should do and he has mentioned the open wireless network defense. The court stated that the messages in Muropaketti and Ylilauta are suggesting that the defendant has communicated the mentioned works to the public.

The defendant stated that he had purchased a wireless router on 17 March 2014 and provided a receipt as an evidence. Incredibly enough, the plaintiffs provided evidence that the technology company had gathered log information of the defendant's IP address already since 17 March 2014 and this has continued until 14 May 2015. The monitoring report shows BitTorrent traffic (works regarding other rightsholders) from this IP address during that time period. The accuracy of the log information was not contested by the defendant. The use of BitTorrent file-sharing application has started on 17 March 2014 and continued on almost a daily basis until 22 April 2015. After that date, the 22 April 2015, there was only one log information regarding the use of BitTorrent file-sharing application and this happened on 14 May 2015. This means that the use of BitTorrent file-sharing application has stopped almost completely on 22 April 2015, only two days after the settlement letter was sent to the defendant. This is also suggesting that the defendant has communicated the mentioned works to the public. The court agreed on this issue.

After receiving the settlement letter, the defendant had some correspondence with the law firm. In that correspondence, on 4 May 2015, the defendant provided evidence that he has had an open wireless connection and that he has limited the use of the connection to only legal purposes. The defendant provided images of the settings of the wireless router. The evidence did not provide, however, any information about when the defendant has adjusted the settings of the wireless router.

The defendant also used his wireless router's traffic logs as an evidence. According to that log information, the open wireless network has had many users. However, the defendant stated that this traffic log information does not describe the time period of the allegedly infringing acts.

The defendant also referred to an expert report. According to this report, the neighbors of the defendant could have accessed the open wireless network and even someone from the yard could have accessed the network.

Interestingly enough, the plaintiffs hired a private investigator to find out whether the defendant's wireless connection was open as he had claimed. According to the investigator, the wireless connection was password-protected. However, the private investigator carried out his research on 3 December, eight months after the last infringing act logged by the technology company. The court did not place any significance on this evidence.

The court stated that the defendant has provided, per se, a completely plausible description of events. According to that description, an unidentified person, or many of them, could have accessed the open wireless network belonging to the defendant and has/have then used it for downloading and sharing copyrighted material. However, this description of events is only hypothetical, albeit technically plausible. On the other hand, the plaintiffs have provided technical evidence based on the monitored traffic and log information mentioned above. The plaintiffs have provided also other evidence, in the form of the messages in the online discussion boards, that suggests that the defendant is the infringer. According to chapter 17 section 2 paragraph 2 of the Code of Judicial Procedure (4/1734, as amended in 2016), a circumstance may be taken as grounds for the judgment only on the condition that a party has presented credible evidence regarding it. The court concluded that the plaintiffs have presented credible evidence that the defendant has communicated the mentioned works to the public.

The amount of reasonable compensation

Now when the court was convinced that the defendant had done the infringing acts, it was time to determine the reasonable amount of compensation under section 57 of the Copyright Act.

It is worth mentioning again that in this case the plaintiffs are not seeking compensation for the reproduction of the works. It was agreed by both parties that the compensation is going to be determined only in the context of making the works available to the public.

The court stated that the purpose of the reasonable compensation is to restore an injured party to his former position. The court stated that willfulness or negligence is not required. Furthermore, it is not required that the infringer has financially profited from the infringement.

The court also referred to a Finnish Supreme Court decision 2010:47 where the Supreme Court stated that the purpose of the reasonable compensation is also to effectively prevent copyright infringements. The Supreme Court has stated also, in that same decision, that the basis of the reasonable compensation should be the price of the work in a distribution channel that is the most similar to the infringing conduct. If no evidence is provided of those prices, it is appropriate to determine the reasonable compensation based on an overall consideration of the case. The overall consideration has to take into account the characteristics of the case, such as the purpose of making profit.

The plaintiffs and the defendant both provided their versions of the basis of reasonable compensation.

According to the plaintiffs, the basis of reasonable compensation in this case is a license fee that a distributor has to pay in order to distribute the work in a restricted geographical area. These license fees are usually based on the production costs of a tv-show or a movie. The plaintiffs suggested that a reasonable amount is 1 000 euros for the movie and 7 500 euros for the ten episodes of the tv-show, 750 euros per episode. The court rejected the suggestion and stated that the conduct of the infringer cannot be compared to this.

The defendant argued that the mentioned tv-show is available on HBO Nordic, the video-on-demand service. The monthly subscription cost of that service is 9,95 euros. The defendant argued that a single episode would therefore cost 0,995 euros and ten episodes 9,95 euros. The price of the movie in an online store is 9,95 euros. The court rejected these compensation suggestions. According to the court, the subscriber of the video-on-demand service can watch the work on his/her own device, but it is not possible or allowed to copy the work or distribute the work forward. The same restrictions apply also to a copyright protected DVD.

Therefore, the court stated that the reasonable compensation has to be determined based on an overall consideration of the case. The compensation has to effectively prevent copyright infringements, but at the same time it has to be reasonable. The overall consideration has to take into account the characteristics of the case, such as the purpose of making profit.

The court considered that the following facts are increasing the amount of compensation:

- The defendant has been communicating the works to the public immediately after the works have been published. This has decreased the interest of the public to use legal distribution channels.

- The defendant has participated in an uncontrollable distribution of the works on the internet. The works have been unprotected and in high-definition.

The following facts are, according to the court, decreasing the amount of compensation:

- The defendant participated in the distribution with the other users. The defendant was a single user in a swarm and therefore he could not have an influence on how many people downloaded the works.

- The defendant has not made any profit by communicating the works to the public.

According to chapter 17 section 2 paragraph 3 of the Code of Judicial Procedure, if credible evidence is not available regarding the amount of a claim under private law or such evidence is obtainable only with difficulty or, in view of the nature of the case, with unreasonable cost or difficulty, the court shall assess the amount.

The court stated that, taking into account the assessment above, the reasonable amount of compensation is 100 euros for the movie and 50 euros per shared tv-show episode.

The court ordered the defendant to pay 600 euros in compensation plus legal interest.

In addition to that, the court ordered the defendant to pay the plaintiff's legal fees, in total 31 762,16 euros plus legal interest. The defendant's own legal fees were in total 21 714,32 euros plus legal interest.

Further comments

It remains to be seen what effects this decision will have. The sending of the settlement letters will probably continue. In my opinion, the most important part of the case is the assessment whether the defendant has personally done the infringing acts. I wonder if the outcome would have been different without the messages that the defendant had, according to the court, posted online. As I mentioned in my earlier post, the rightsholders have sued more alleged file-sharers to the Market Court during the year 2016. One would think that they have carefully picked the defendants based on the strength of their evidence i.e. how they can prove that the internet subscriber was in fact the infringer.

It was important that the court defined the amount of reasonable compensation. It is hard to say whether this will affect the amount of the sums demanded in the settlement letters. The letter receivers and alleged infringers have now the possibility to refer, when negotiating with the rightsholders, to the compensation sums ruled by the court. However, one has to take into account that the settlement sums include some other costs too, not only the compensation to the rightsholders. The identification of the internet subscriber (court ordering the ISP to give up details) can be costly for the rightsholders.

The rightsholders have an important leverage in the form of the legal fees. In this case the amount is more than 30 000 euros plus the defendant's own costs. Even if the compensation is lowered by the court, the legal fees are big enough to make the alleged infringers think twice whether a fight against the rightsholders is worth it. One option is to only deny the requested amount of compensation, if it is bigger than it would be according to the compensation guideline ruled in this decision. If the case still goes to the court, the legal fees should be far less than in this case because the identity of the infringer is not contested.

Finally, the defendant of this case may still wish to pursue an appeal to the Supreme Court.

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Another topic of discussion are the requirements to order the ISP to give up the personal details of the internet subscriber. According to section 60 a of the Copyright Act, an author or his representative shall be entitled, by the order of the court of justice, to obtain contact information from the maintainer of a transmitter, server or a similar device or other service provider acting as an intermediary about a tele-subscriber who, unauthorised by the author, makes material protected by copyright available to the public to a significant extent in terms of the protection of the author's rights. In this case, the court had earlier ordered the relevant ISP to give up the personal details of the X. It is not perfectly clear, in my opinion, whether the sharing of ten episodes of a tv-show and a movie can meet the threshold of "makes material protected by copyright available to the public to a significant extent". But as said, this discussion is probably outside the scope of this post.

The Market Court and Three Interim Injunction Decisions (Rim Designs and Center Caps)

noreply@blogger.com (Author - FinnIPR) — Mon, 04 Jul 2016 07:12:00 +0000

The Market Court issued three interim injunction decisions (358/16, 359/16 and 360/16) on 15 June. In all these decisions, Volkswagen AG (Volkswagen) is the plaintiff.

According to Volkswagen, three Finnish companies were marketing and selling without permission rims that were identical or similar with registered designs belonging to Volkswagen. According to Volkswagen, two of the three companies were also marketing and selling without permission center caps (for rims) that were practically identical with a registered European Union trademark belonging to Volkswagen.

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In an application against Rengas Turku Oy (Rengas Turku), Volkswagen requested the court to:

1. Prohibit the defendant from using, offering, marketing, selling, importing, exporting or storing the following rim designs:

- RE SCIROCCO GINOSTRA W456
- RE SCIROCCO GINOSTRA W456 BLACK
- RE W463 CROSS
- IMAGE TORINO

According to Volkswagen, these rim designs are identical or similar with the registered community designs 000135199-0042, 000603857-0001 and the registered international design DM/077 557.

Volkswagen also requested the court to prohibit Rengas Turku from using, offering, marketing, selling, importing, exporting or storing center caps that were practically identical with the registered European Union trademark 000703983. Volkswagen specified that the infringing center caps are included in the rim designs RE W463 CROSS and IMAGE TORINO.

Volkswagen also requested the court to impose a conditional fine of 200 000 euros to reinforce the orders.

2. Seize all the infringing rim designs.

3. Order that all accounting documents (invoices, sales documents and receipts) regarding the infringing rim designs are copied permanently by the bailiff and handed over to Volkswagen.

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In an application against vannetukku.fi Oy (vannetukku.fi), Volkswagen pretty much repeated the requests mentioned above. This time the defendant was marketing and selling rim designs named as 'Fit for VW Reperbahn' and those designs were, according to Volkswagen, infringing the registered international design WO DM/079 881-1. In this case there were no requests regarding center caps.

In an application against OEMPLUS Oy (OEMPLUS), Volkswagen repeated again the requests mentioned in the first application with the exception that this time there was a more comprehensive list regarding rim designs marketed and sold by the defendant:

- 16992 volkswagen-riace-anthracite-polished
- 17002 volkswagen-ginostra-silver
- 17009 volkswagen-rostock-silver
- 17025 volkswagen-linz-silver-polished-lip
- 17026 volkswagen-dhaka-silver-polished and 17027 volkswagen-dhaka-silver
- 17037 volkswagen-ciprus-anthracite-polished and 17042 volkswagen-ciprus-glossy-black-lip-polished
- 17041 volkswagen-ciprus-silver-polished
- 17043 volkswagen-sparta-silver-polished
- 17048 volkswagen-ankara-silver
- 18371 volkswagen-r-nisida ja 18372 volkswagen-r-nisida-black
- 18502 volkswagen-sahara-matt-gunmetal, 18503 volkswagen-sahara-silver-polished-lip and 18504 volkswagen-sahara-silver
- 18539 volkswagen-cross-anthracite-polished
- 18540 volkswagen-cross-hyper-silver.

According to Volkswagen, those rim designs are identical or similar with the registered community designs 000135199-0001, 000135199-0007, 000135199-0025, 000135199-0036, 000135199-0042, 000603857-0001 000848361-0001 and the registered international designs DM/077 557 and DM/079 881.

Furthermore, OEMPLUS is marketing and selling center caps that are, according to Volkswagen, infringing the registered European Union trademark 000703983.

Volkswagen also requested the court to seize the infringing center caps.

Registered Community Design 000135199-0042.

The Market Court and the Volkswagen's requests no. 1-2

The Market Court stated that the requests no. 1-2 in the Volkswagen's applications are based on chapter 7 section 3 of the Code of Judicial Procedure (4/1734). According to that rule, there are three requirements that must be fulfilled before an interim injunction can be granted: claim requirement, danger requirement and comparison of interest / unreasonable inconvenience.

1) Claim requirement; the right holder needs to demonstrate that it is probable that he or she has a right that is enforceable against the opposing party.

The court referred to earlier Supreme Court rulings 1994:132, 1994:133, 1998:143, 2000:94 and 2003:118. In the rulings 1998:143, 2000:94 and 2003:118, the Supreme Court has stated that the threshold for granting an interim injunction is considerably higher in cases in which the interim injunction would lead to a situation where the applicant achieves in advance the same outcome, which is the subject of the claims in the main proceedings (etukäteisnautinta in Finnish).

In the application against Rengas Turku, Volkswagen claimed that Rengas Turku is marketing and selling, in its own online store, without permission rims that are identical or similar with the registered designs belonging to Volkswagen. Volkswagen also claimed that some of the rims have a center cap that is practically identical with the registered European Union trademark belonging to Volkswagen. Rengas Turku did not deny these claims, it only stated that it has removed the allegedly infringing rims and center caps from sale. The court ruled that, based on the evidence provided in the case and the fact that Rengas Turku has not denied the claims, Volkswagen has an enforceable right against Rengas Turku.

In the application against vannetukku.fi, Volkswagen claimed that vannetukku.fi is marketing and selling, in its own online store, without permission rims that are identical or similar with the registered international design DM/079 881-1 belonging to Volkswagen, applied on 19 December 2012. Vannetukku.fi denied the claims because the rim named 'Fit for VW Reperbahn' is based on a registered community design 002649970-0025 (applied 10 March 2015) belonging to Paalupaikka Oy, a subsidiary company of vannetukku.fi. According to vannetukku.fi, the presumption of validity rule is giving the company the right to sell and market the design rim as long as the said design right is valid. The rule is expressed in Article 85 of the Community Design Regulation No 6/2002. Furthermore, vannetukku.fi denied the claims because it considers that the design right belonging to Volkswagen is not new and it covers a spare part of a car and those kind of spare parts can not obtain any community design right.

The court had to assess whether it is probable that the sold and marketed rims are infringing the registered design right belonging to Volkswagen. The court stated that vannetukku.fi did not deny that the marketed and sold rims are identical or similar with the registered design right belonging to Volkswagen. According to the court, the fact that the subsidiary company of vannetukku.fi has the registered community design does not, per se, have a significance. When a community design is applied, there is a minimal official examination of an application, and no official searches, for example regarding novelty, are carried out as provided in Article 47 of the Regulation. Therefore, it is possible that an applied community design will be registered even though it is identical with an earlier registered community design.

The court also stated that the presumption of validity provided in the Article 85 is not protecting the vannetukku.fi in this case. The presumption of validity is only protecting the allegedly infringed design. The court stated that in this case the presumption of validity actually protects the registered international design DM/079 881-1 belonging to Volkswagen, and that this design shall be treated as valid, despite the claims regarding a lack of novelty and the rim not being able to obtain any community design right. Even if this was not the case, vannetukku.fi has not provided any evidence that the registered international design DM/079 881-1 lacks novelty. Therefore, the court stated that Volkswagen has an enforceable right against vannetukku.fi.

In the application against OEMPLUS, Volkswagen claimed that OEMPLUS is marketing and selling, in its own online store, without permission rims that are identical or similar with the registered community designs 000135199-0001, 000135199-0007, 000135199-0025, 000135199-0036, 000135199-0042, 000603857-0001, 000848361-0001 and registered international designs DM/077 557 ja DM/079 881 belonging to Volkswagen. Volkswagen also claimed that some of the rims have a center cap that is practically identical with the registered European Union trademark belonging to Volkswagen. OEMPLUS did not deny these claims, it only stated that it has removed the allegedly infringing rims and center caps from sale. OEMPLUS also stated that this was an unintended infringement that was interfered with immediately when the company noticed it. The court ruled that, based on the evidence provided in the case and the fact that OEMPLUS has not denied the claims, Volkswagen has an enforceable right against Rengas Turku.

2) Danger requirement; there is a danger that the opposing party by deed, action or negligence or in some other manner hinders or undermines the realisation of the right of the applicant or decreases essentially its value or significance,

The court referred to earlier Supreme Court rulings 1994:132 and 1994:133 where the Supreme Court has ruled that the danger requirement is fulfilled if the danger is not very improbable based on the circumstances in the case.

The defendant Rengas Turku has marketed and sold allegedly infringing rims and some of the rims have allegedly infringing center caps. The company stated that it has removed the products from sale, but admitted that it still has some in its storage. Therefore, the court stated that the danger requirement is sufficiently fulfilled.

The defendant vannetukku.fi has marketed and sold allegedly infringing rims. Volkswagen provided evidence that it has purchased four allegedly infringing rims named 'Fit for VW Reperbahn' from the online store of vannetukku.fi on 16 February 2016. Therefore, the court stated that the danger requirement is sufficiently fulfilled.

The defendant OEMPLUS has marketed and sold allegedly infringing rims and some of the rims have allegedly infringing center caps. Volkswagen provided evidence that it has purchased four allegedly infringing rims named 'R" Nisida 19' from the online store of OEMPLUS on 16 February 2016. OEMPLUS stated that it has removed the products from sale. The company also stated that it does not have any rims or center caps anymore in its storage. Nevertheless, the court stated that the danger requirement is sufficiently fulfilled.

3) Comparison of interest / unreasonable inconvenience; the opposing party does not suffer undue inconvenience in comparison with the benefit to be secured.

Volkswagen stated that the interim injunction can not cause any unreasonable financial inconvenience to Rengas Turku because the allegedly infringing rims are only a small part of all the rims provided by Rengas Turku in its online store. According to Volkswagen, dismissal of the application (for an interim injunction) would cause sales decrease and possible detriment to its brand. According to Rengas Turku, the interim injunction is not necessary because it has removed the products from sale. The court ruled that, based on the evidence provided in the case and the rule that the applicant who has unnecessarily resorted to a precautionary measure is liable to compensate the opposing party for the damage caused by the precautionary measure and its enforcement, and to cover the expenses incurred, Rengas Turku does not suffer undue inconvenience. The liability to compensate the damage and cover the expenses is expressed in chapter 7 section 3 of the Code of Judicial Procedure.

In the application against vannetukku.fi, Volkswagen expressed the same arguments mentioned above regarding the comparison of interest / unreasonable inconvenience. Vannetukku.fi argued that it has a very big storage that consists mainly of tires. According to the company, it has only two allegedly infringing rims left in its storage. The court ruled the same way as mentioned above regarding the application against Rengas Turku.

In the application against OEMPLUS, Volkswagen expressed the same arguments mentioned above regarding the comparison of interest / unreasonable inconvenience. Vannetukku.fi only stated that it has more than 16 000 products for sale in its online store. The court ruled the same way as mentioned above regarding the applications against Rengas Turku and vannetukku.fi.

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In all the cases, the court stated that it is possible to order an interim injunction regarding the request no. 1. The court also stated that the request no. 2 (seizure) is not necessary because the court will impose a conditional fine to reinforce the orders regarding the request no. 1. Therefore, the request no. 2 was dismissed. The conditional fine is 30 000 euros regarding Rengas Turku and OEMPLUS and 50 000 euros regarding vannetukku.fi.

The Market Court and the Volkswagen's request no. 3

The Volkswagen's request no. 3 (copying and handing over the accounting documents) is based on sections 2 and 3 of the Act on Securing Evidence in Civil Matters concerning Industrial Rights and Copyrights (344/2000). According to the section 2, the court can give a seizure order concerning any material that can have a significance in the case in question. The opposing party shall not suffer undue inconvenience in comparison with the benefit to be secured (comparison of interest / unreasonable inconvenience). According to the section 3, the right holder needs to demonstrate that it is probable that he or she has a right that is enforceable against the opposing party, and the right is being infringed or that such infringement is imminent (claim requirement). Furthermore, there is a danger that the opposing party, or the one who has the material, conceals, destroys or hands over the evidence or in some other manner endangers the preservation of the evidence (danger requirement).

All in all, the requirements for the interim injunction are pretty much the same as the requirements regarding the chapter 7 section 3 of the Code of Judicial Procedure.

In all the applications, Volkswagen has argued that the preservation of the accounting documents is important in order to launch an infringement proceedings and determine the claim for compensation.

The court assessed first the claim requirement. The court stated that the claim requirement is fulfilled also regarding the request no. 3 and the accounting documents mentioned in the request have, per se, a significance in the cases in question.

The court then assessed the danger requirement. According to Volkswagen, there is a substantial danger that the evidence is not going to be preserved, in its entirety, without a seizure. There is a considerable risk that the defendants could, for example, destroy some relevant receipts or sales orders.

The court stated that chapter 2 sections 9 and 10 of the Accounting Act (1336/1997) are providing information on how and how long to preserve accounting documents. Furthermore, chapter 30 section 9 of the Criminal Code of Finland (39/1889) provides that if a person with a legal duty to keep accounts, his or her representative, a person exercising actual decision-making authority in a corporation with a legal duty to keep books, or the person entrusted with the keeping of accounts, destroys, conceals or damages accounting documentation and in this way impedes the obtaining of a true and sufficient picture of the financial result of the business of the said person or of his or her financial standing, he or she shall be sentenced for an accounting offence to a fine or to imprisonment for at most two years.

Therefore, according to the court, it is very improbable that the defendants would destroy any of the evidence mentioned in the request no. 3. The danger requirement is not fulfilled and there was no need to assess the comparison of interest / unreasonable inconvenience.

The request no. 3 was dismissed.

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Enforcement and security

According to chapter 7 section 3 paragraph 3 of the Code of Judicial Procedure, a prerequisite for the entry into force of the interim injunction is that the applicant applies for enforcement of a precautionary measure as provided in chapter 8 of the Enforcement Code (705/2007). According to chapter 8 section 2 paragraph 1 of the Enforcement Code, enforcement of a precautionary measure requires that the applicant lodges with the bailiff security for loss that the respondent may incur as a result of the precautionary measure. According to chapter 8 section 3 of the Enforcement Code, the defendant can lodge a security in order to prevent the enforcement.

The main proceedings

According to chapter 7 section 6 paragraph 1 of the Code of Judicial Procedure, when the interim injunction application has been granted, the applicant shall within one month of issue of the order bring an action on the main issue before a court or bring the main issue up for consideration in other proceedings that may result in a decision enforceable in accordance with chapter 2 section 2 of the Enforcement Code. If the consideration of the issue is not initiated within said period, or if the case is discontinued, the preliminary injunction shall be reversed, as provided in chapter 8 section 4 of the Enforcement Code.

The Market Court: A Mark with a Reputation? Yes. Infringement or Unfair Business Practice? No.

noreply@blogger.com (Author - FinnIPR) — Fri, 01 Jul 2016 14:51:00 +0000

HKScan Finland Oy (HKScan) is a Finnish food manufacturer. The company specializes in meat foods and products. HKScan has many trademarks and a European Union trademark (EUTM) 005379061, registered in 2007, is one of them. The mark is registered in classes 5, 29, 30, 31, 32, 35 and 39.

EUTM no. 005379061.

Verdener Keks- und Waffelfabrik Hans Freitag GmbH & Co. KG (Hans Freitag) is a German company specialized in bakery products. The company has a EUTM 011473031, registered in 2013 and in classes 29 and 30.

EUTM no. 011473031.

In 2015, HKScan launched trade mark infringement proceedings against Hans Freitag in the Market Court.

HKScan requested that the court:

1. confirms that the EUTM 005379061 has a reputation in Finland since 2010 or not later than 2013 and primarily for groceries and secondarily for meat products.
2. (i) primarily, confirms that Hans Freitag is guilty of trademark infringement and prohibits the company from using its trademark in Finland for groceries. The court should impose a conditional fine of 200 000 euros to reinforce the order; and
(ii) secondarily, confirms that Hans Freitag is guilty of unfair business practice and prohibits the company from taking advantage of the goodwill of the HKScan's mark and from causing detriment to the mark. The court should impose a conditional fine of 200 000 euros to reinforce the order.
3. orders Hans Freitag to pay reasonable compensation to HKScan, in total 77 250 euros.
4. orders Hans Freitag to pay damages to HKScan, in total 100 000 euros.
5. orders Hans Freitag to pay HKScan's legal fees, in total 98 643,03 euros plus legal interest.

The Market Court issued its decision 355/16 on 15 June 2016.

In its decision, the court assesses first whether the HKScan's seal trademark has a reputation in Finland. Then it assesses whether the Hans Freitag's trademark use is infringing. If the court does not find any infringement, it still has to assess whether Hans Freitag is guilty of unfair business practice according to the Unfair Business Practices Act (1061/1978).

Does HKScan's seal trademark have a reputation in Finland?

The court stated that the concept of a trademark with a reputation is based on European Union legislation and on the rulings of the Court of Justice (CJ). The court referred to a CJ decision C-375/97 General Motors (paras 26 and 27) where CJ ruled that:

"The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it."

HKScan provided evidence that it had used the HK seal trademark since 2007. The company also provided evidence that it had used somewhat similar round trademarks since 1960's. Those marks also had the letter combination HK. The court stated that the current seal trademark does not benefit directly from the duration and extent of use of the earlier marks, but the letter combination HK has been in use since 1960's and that can have some effect when one assesses the reputation of the current HK seal mark.

According to the court, HKScan has put significant financial efforts (millions of euros per year) in order to market its products, mainly meat products. The HK seal trademark has been very visible in that intensive marketing and the marketing has covered the whole Finland.

HKScan also provided a market survey. According to the market survey, 94,8 percent of the respondents connected the HK seal trademark with HKScan from a list that had 14 different manufacturers. Therefore, the prompted (or aided) awareness was very high. The court acknowledged this survey but also stated that the survey question itself aided the respondents to choose HKScan from the list, because the company name and the trademark both have the letter combination HK in them. The court also paid attention to the fact that the market survey had been done in March 2014. The court found this problematic because, according to HKScan, the HK seal trademark has had a reputation in Finland since 2010 or not later than 2013. The court continued by stating that the significance of the survey can not be very high when one assesses the reputation of the mark in 2010 because the mark has been in use for a relatively short period of time. Therefore, the market survey has much more significance in providing that there has been a reputation in 2013.

The court concluded that the HK seal trademark has had a reputation in Finland since 2013, despite the fact that the market survey had some debilitating factors. The court specified that the reputation of the mark is only regarding meat products, not in general.

Is there an infringement?

HKScan argued that Hans Freitag has infringed its exclusive rights provided in Article 9(1)(c) of the Community trademark Regulation No 207/2009:

1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

The court started its analysis by referring to the case-law of CJ. CJ has ruled, in essence, that it is sufficient for the degree of similarity between the mark with a reputation and the other sign to have the effect that the relevant section of the public establishes a link between the sign and the mark. No likelihood of confusion is required between them on the part of the relevant section of the public (see C-408/01 Adidas Benelux, para 31).

The existence of the link mentioned above must be assessed globally, taking into account all factors relevant to the circumstances of the case. According to C-252/07 Intel (para 42), those factors include:

- The degree of similarity between the conflicting marks, in particular visual, aural or conceptual similarity (see C-408/01 Adidas Benelux, para 28).

- 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;

- the existence of the likelihood of confusion on the part of the public.

So the court had to assess first whether there is a similarity link between the HK seal trademark and the hf trademark. If such link exists, the court has to then asses whether the use of the hf trademark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the HK seal trademark (see C-487/07 L'Oréal, paras 37-38).

The conflicting marks both have seal elements and a letter combination in the middle. Thus, the visual similarity is somewhat high on the part of the relevant section of the public, even though there are some differences, such as the vertical ribbon element in the hf trademark, the text elements circling the logo and the circle and wing element in the HK seal trademark above the letter combination HK. However, this visual similarity, according to the court, is primarily caused by the shapes and colors that are typically used in different seals or quality stamps regarding different groceries.

After this, the court assessed the aural similarity. The HK seal trademark has a letter combination 'HK', which is pronounced as 'hookoo' among the relevant Finnish public. On the other hand, the hf trademark has several text elements for the public to pronounce and only the letter combination 'hf' is similar to the 'HK'. Therefore, there is a minimal degree of aural similarity.

The court was not so impressed with the conceptual similarity either. The court stated that the letter combinations 'HK' and 'hf' do not have any meanings as such, even though part of the relevant public understands that the letter combination 'HK' stands for 'Helsingin kauppiaat' ('Helsinki Merchants'). Furthermore, the public understands that the text element 'HANS FREITAG' refers to a person and the meaning of the German text element 'Keks- und Waffelbäckerei' can be also understood because of the knowledge of Swedish language among the relevant Finnish public.

Since the seal shapes and colors are fairly typical in trademarks representing grocery products, the court considered that the text elements 'HK', 'hf' and 'HANS FREITAG' are the dominant components of the conflicting marks. There is a minimal degree of similarity in this regard.

The court then compared the goods and stated that the bakery products are not, per se, similar to meat products, but they are both groceries and have in general the same distribution channel, the same relevant public and the same purpose of use. Therefore, the goods are fairly identical.

Even though the HK seal trademark has a reputation in Finland and it is distinctive, the court concluded, based on the analysis above, that the relevant section of the public does not establish a link between the conflicting marks. Therefore, there were no need to assess the remaining requirements (detriment to the distinctive character of the mark, detriment to the repute of that mark and unfair advantage taken of the distinctive character or the repute of that mark).

Unfair business practice (reputation parasitism)?

HKScan argued that Hans Freitag has, by using the hf trademark, created an association between the mark and the HK seal trademark and therefore has taken undue advantage of the goodwill of the HK seal trademark. HKScan referred to section 1 paragraph 1 of the Unfair Business Practices Act. According to that rule, good business practice may not be violated nor may practices that are otherwise unfair to other entrepreneurs be used in business.

It has been ruled in the Finnish case-law that the section 1 paragraph 1 of the Unfair Business Practices Act prohibits anyone from taking undue advantage of another's goodwill (in trademarks, products, business concepts etc). This is also known as 'reputation parasitism' ('maineen norkkiminen' in Finnish).

Also according to Article 15 of the ICC Code on Advertising Practice, marketing communications should not in any way take undue advantage of another firm's, individual's or institution's goodwill in its name, brands or other intellectual property, or take advantage of the goodwill earned by other marketing campaigns without prior consent.

The court stated that there are two requirements for reputation parasitism. Firstly, the alleged victim mark of the reputation parasitism has to be well-known in the market and have a reputation. Secondly, there has to be an association between the conflicting marks and the one who has created the association is aiming to exploit the goodwill of the other mark. The court added that the reputation parasitism does not require, per se, that the conduct misleads the average consumer about the commercial origin of the product.

The court found earlier that the HK seal trademark has a reputation in Finland since 2013. Therefore it has, according to the court, the goodwill that the assessment of the reputation parasitism requires.

Now the court had to assess whether Hans Freitag has, while using the hf trademark, created an association between the hf trademark and the HK seal trademark among the reasonably well-informed and reasonably observant and circumspect average consumers.

The court referred to its analysis above regarding the absence of the similarity link between the conflicting marks and ruled that an average consumer would not associate the hf trademark with the HK seal trademark. Interestingly enough, HKScan had provided evidence that it has sometimes used the HK seal trademark with a blue ribbon element, but the court did not change its stance. Therefore, Hans Freitag has not taken undue advantage of the goodwill of the HK seal trademark.

The action was dismissed.

Helsinki District Court Ordered Co-founder of the Pirate Bay to Pay Heavy Compensation

noreply@blogger.com (Author - FinnIPR) — Wed, 22 Jun 2016 07:49:00 +0000

In November 2011, several record labels filed a lawsuit in the District Court of Helsinki against Peter Sunde, the co-founder of the popular file-sharing site Pirate Bay. The record labels provided evidence that 60 albums of their Finnish artists were shared through the Pirate Bay in May 2011. They held Sunde responsible for that and requested that the court orders him to pay compensation of 350 892 euros plus legal interest.

The record labels also requested that the court orders Sunde to cease making the content available to the public, and imposes a conditional fine of (at least) one million euros to reinforce the order.

Furthermore, the record labels requested that Sunde has to pay their legal fees and other expenses, in total 54 786,91 euros plus legal interest.

According to the record labels, the Pirate Bay is very popular among the Finnish file-sharers. They considered that, even with a cautious estimate, a work in the Pirate Bay was within reach of tens of thousands of Finns.

The Pirate Bay.

Sunde did not respond to the lawsuit before the deadline and the court issued a default judgment (no. 16/26496) on 2 June 2016 in the record labels favor. The lawsuit was not, according to the court, manifestly without a basis.

According to chapter 12 section 15 of the Code of Judicial Procedure (4/1734), the party against whom the case has been decided by a judgment by default has the right to appeal it in the court that rendered the judgment. Therefore, there is a chance that this case will go straight back to the District Court of Helsinki.

This is a peculiar case and one would assume that Sunde is going to appeal against the judgment. In 2015, Sunde and other founders of the Pirate Bay were cleared of copyright infringement in a Belgian court. They were accused, inter alia, of criminal copyright infringement because copyright infringing material had been shared through the Pirate Bay between September 2011 and November 2013. They were cleared of all charges after they proved that they had sold the site in 2006 and therefore were no longer active with the site's operations during the period in question.*

* SOURCE: Andy (2015, July 10). Pirate Bay Founders Acquitted in Criminal Copyright Case. TorrentFreak. [online] Available at: https://torrentfreak.com/pirate-bay-founders-acquitted-in-criminal-copyright-case-150710/ [Accessed 21 Jun. 2016].

The Market Court: Utility Model for Laser Treatment Lacked Novelty

noreply@blogger.com (Author - FinnIPR) — Sun, 19 Jun 2016 10:58:00 +0000

A utility model is similar to a patent. However, there are some differences. One key difference is that many registration authorities, like the Finnish Patent and Registration Office (PRH), do not automatically examine the requirements of novelty and inventiveness. The examination of those requirements is necessary only if an invalidity claim is raised in relation to those requirements.

The examination of novelty became the decisive factor in the Market Court decision 336/16 of 7 June 2016.

Background

In February 2012, the Board of Trustees of the Leland Stanford Junior University (LSJU) filed a utility model application for an invention 'Patterned laser treatment of the retina'. The invention consisted of independent claim 1 and dependent claims 2-20. The application was converted from a European Patent Application, filed on 2 December 2004.

PRH registered the utility model (no. 9630) on 19 April 2012.

Drawing of the invention.
Application no. U20124034.

Valon Lasers Oy (VL) lodged an invalidation claim based on section 19 of the Act of Utility Model Rights (800/1991). The section 19 provides that a utility model registration shall be declared wholly or partially invalid in response to a request to that effect, if, inter alia, the registration relates to an invention that is not new and/or lacks the required inventiveness. VL cited the following prior art documents:

- D1: US 2003179344 A, 25 September 2003

- D2: JP 2001149403 A2, 05 June 2001

PRH accepted the invalidation claim and revoked the utility model on 31 July 2014. According to PRH, all the features in the claim 1 are found in both prior art documents (D1 and D2) although the solutions in the documents are slightly different in practice.

The Market Court

LSJU appealed to the Market Court and requested that the decision of PRH will be reversed. Furthermore, LSJU requested that the Market Court upholds the registration of the utility model no. 9630 in accordance with claims the appellant has provided to the Market Court on 8 December 2014 (independent claim 1 and dependent claims 2-18).

Here is a translation of the independent claim 1, amended on 8 December 2014 (FinnIPR translation with the help of EP20040812972):

1. A system for laser treatment of the retina of an eye of a patient, the system comprising:

an alignment source (411) producing an alignment beam that provides a visible alignment pattern comprising a plurality of separated spots projected onto said retina; and

a laser source (413) producing, responding to an operator action, a laser beam for providing doses of laser energy to at least two treatment locations on said retina where the said spots are,

characterised in that the said treatment locations are spaced apart, and that the system comprises a scanner for moving the laser beam from one of said treatment locations to another of said treatment locations, and wherein said scanner moves the alignment beam from one of said separated spots to another of said separated spots, and for providing all of said doses of laser energy to said treatment locations substantially sequentially, and in less than about 1 second.

VL, on the other hand, argued that:

1) the appellant should have provided the amended claims already in the proceedings at PRH. Therefore, the amended claims should be dismissed.

2) the invention is, according to the independent claim 1, merely a process and therefore not registrable.

3) the amended independent claim 1 and the description include matter that is not disclosed in the original application.

4) the independent claim 1 of the invention is not presented precisely enough and that the description of the invention is not sufficiently clear to enable a person skilled in the art to carry out the invention.

5) the invention is not new and/or it lacks the required inventiveness.

The Market Court issued its decision 336/16 on 7 June 2016.

1) Was LSJU able to amend the claims in the proceedings at the Market Court?

The Market Court started its analysis by stating that one has to seek answer from the Administrative Judicial Procedure Act (586/1996) since neither the Market Court Proceedings Act (100/2013), Act on Utility Model Rights nor the Act on the Finnish Patent and Registration Office (578/2013) have rules that restrict the appellant from presenting new grounds during the appeal proceedings.

Section 27 paragraph 2 of the Administrative Judicial Procedure Act provides that, after the end of the appeal period, the appellant may present new grounds in support of his appeal, unless the matter as a result changes in nature. The court ruled that this applicable rule does not prevent the appellant from providing new amended claims during the appeal to the Market Court.

2. Is the invention merely a process?

According to section 1 paragraph 4 sub-paragraph 3 of the Act on Utility Model Rights, utility model rights shall not be granted for processes.

VL had argued that the invention is merely a process because of the following statement in the independent claim 1:

"providing all of said doses of laser energy to said treatment locations -- in less than about 1 second".

The court ruled that the feature mentioned above is a so-called functional feature. The court continued by stating that it is possible to use functional features in product or apparatus claims. The court concluded that the independent claim 1 is clearly an apparatus claim, not a process claim.

3. Does the amended independent claim 1 and the description include matter that is not disclosed in the original application?

According to section 11 of the Act on Utility Model Rights, a utility model application may not be amended in such a way that a utility model right is claimed for matter not disclosed in the original application.

VL argued that the statement in the independent claim 1, which mentions that the treatment locations are apart, is not disclosed in the original application.

The court disagreed and stated that the original description includes drawings that demonstrate how the treatment locations are apart.

4. Is the independent claim 1 of the invention presented precisely enough and is the description of the invention sufficiently clear to enable a person skilled in the art to carry out the invention?

According to section 6 paragraph 2 of the Act on Utility Model Rights, the application shall contain a description of the invention, accompanied by drawings where necessary, and a precise statement of the subject matter for which utility model right protection is sought (a claim). Furthermore, the description shall be sufficiently clear to enable a person skilled in the art to carry out the invention with the guidance thereof.

VL argued that according to the description, the treatment locations could be bigger than the alignment spots and therefore, according to VL, the treatment locations could be partially overlapping each other if their corresponding spots are close to each other and if the treatment locations are bigger in relation to the said spots. This would contradict the independent claim 1, which mentions that the treatment locations are apart.

The court stated that the description of the invention does not mention that the treatment locations could be partially overlapping. The statement in the independent claim, which mentions that the treatment locations are apart, is therefore consistent with the description and it is presented precisely enough.

5. Is the invention new and does it have the required inventiveness?

According to section 2 paragraph 1 of the Act on Utility Model Rights, an invention must be new in relation to what was known before the filing date of the utility model right application and must differ essentially therefrom.

VL argued that the independent claim 1 is not new in light of the prior art documents D1 and D2.

The court stated that the D1 does not include a feature where an alignment beam provides a visible alignment pattern comprised of several separate spots. The invention, as presented in the independent claim 1, is therefore new in light of prior art document D1.

The court then analysed the prior art document D2. According to the court, there are some differences between the treatment presented in the independent claim 1 and the treatment presented in D2. The court ruled, however, that the functional features, mainly the separate treatments spots, are not able to add to the independent claim 1 any technical features, which would differentiate the independent claim 1 from the prior art D2.

The court ruled that the invention is not new in relation to what was known before the filing date of the utility model right application and it does not differ essentially therefrom.

Therefore, the invention is not registrable.

The appeal was dismissed.

The Market Court: Faulty Amendment of a Patent Application

noreply@blogger.com (Author - FinnIPR) — Thu, 16 Jun 2016 13:02:00 +0000

Preparing a patent application requires a lot of precision. After the application is filed, there may be situations where an amendment of the application is needed. The amendment can be a way to overcome a novelty or inventive step objection. With regard to amendments, an important rule is that an amendment should not add any subject matter that is not disclosed in the original patent application. Any new matter requires a new patent application. The decision 329/16 issued by the Market Court on 6 June 2016 is a good example of that.

Background

In January 2006, person X sought patent protection on his invention called 'A district heating facility'. The application consisted of one independent claim and dependent claims 2-3. The Patent and Registration Office (PRH) gave its first technical office action in December 2006. In that office action PRH requested the applicant to specify the prior art and what are the new and characteristic features of the invention. In total, PRH issued five technical office actions regarding the application. After each technical office action, the applicant provided a new set of updated patent claim and description documents. In the end, the application consisted of one independent claim and dependent claims 2-5.

Moving from an idea to a patent (if it is granted).
Image courtesy of OpenClipartVectors at Pixabay.com

In September 2014, PRH decided to reject the application based on section 13 of the Patents Act (550/1967). The section 13 provides that an application for a patent may not be amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. According to PRH, the applicant has amended his patent claims on several occasions by adding new features. PRH notified the applicant in all technical office actions that on those occasions the applicant shall, under section 19 of the Patents Decree (669/1980), state where those new features are to be found in the basic documents. PRH did not receive this kind of statement from the applicant.

PRH continued by stating that the independent claim has, in accordance with section 8 paragraph 2 of the Patents Act, many unclear statements and therefore does not express precisely the subject matter for which patent protection is sought.

Furthermore, PRH stated that the clear parts of the independent claim are lacking an inventive step, a requirement set out in section 2 of the Patents Act. The independent claim includes only conventional ways to take thermal energy from outside air with one heat exchanger and then with another to transfer the thermal energy to indoor spaces.

The Market Court

X did not agree with the decision of PRH and lodged an appeal at the Market Court. X requested the Market Court to reverse the decision of PRH. Furthermore, according to the X, the patent application should be accepted

1) in accordance with the claims that were under examination in the decision of PRH or
2) in accordance with the claims the appellant attached into the appeal or
3) in accordance with the claims the appellant has provided during the Market Court proceedings.

The Market Court issued its decision 329/16 on 6 June 2016.

The Market Court started by stating that in all three scenarios mentioned above there is one independent claim and dependent claims 2-5.

The court then ruled that in all those three scenarios the independent claim adds new matter that is not disclosed in the application at the time it was filed in 2006.

Furthermore, the court ruled that in all three scenarios the independent claim includes unclear statements and that the claim lacks an inventive step.

The appeal was dismissed.

The Market Court: Cider Spirit Verlados is an Evocation of Protected GI Calvados

noreply@blogger.com (Author - FinnIPR) — Wed, 15 Jun 2016 11:30:00 +0000

When is a product name an illegal evocation of a protected geographical indication (GI) of spirit drinks? This question is the core of the decision 307/16 issued by the Market Court on 31 May 2016.

Background

Viiniverla Oy (Viiniverla) started manufacturing and marketing cider spirits named 'Verlados' in 2001. Viiniverla is located in Verla village in Southern Finland.

In 2012, European Commission requested a clarification from the Finnish authorities relating to the use of the name 'Verlados'. The Commission had received a complaint relating to an alleged misuse of the French GI 'Calvados'.

A GI, in accordance with Article 15 of Regulation No 110/2008, is an indication which identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin.

The Finnish Authorities replied in 2013 and stated that the name 'Verlados' refers to the place where it is being manufactured, the village of Verla and the Verla winery. The Finnish Authorities also stated that the two names have only one syllable in common ('dos') and therefore the 'Verlados' is not evocative from the protected GI 'Calvados'. The Finnish authorities referred to an old decision of the Court of Justice (CJ) in which CJ ruled that there is a clear evocation if the term used to designate the product at issue ends in the same two syllables and contains the same number of syllables as the protected name (Consorzio per la tutela del formaggio Gorgonzola, C‑87/97).

The Commission was not impressed and stated that the 'Verlados' is an illegal evocation of the GI 'Calvados' in accordance with Article 16(b) of the Regulation. It also threatened to open infringement proceedings against Finland if that interpretation was not accepted.

The Article 16(b) is worded as follows:

Without prejudice to Article 10, the geographical indications registered in Annex III shall be protected against:

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as “like”, “type”, “style”, “made”, “flavour” or any other similar term

According to Annex III to the Regulation, 'Calvados' is registered in the category of products No 10 'Cider spirit and perry spirit', country of origin being France.

In November 2013, Sosiaali- ja terveysalan lupa- ja valvontavirasto (National Supervisory Authority for Welfare and Health) issued a decision where it prohibited Viiniverla Oy (Viiniverla) from marketing a drink named 'Verlados' as from 1 February 2014. The decision was based under section 49 paragraph 2 of Alcohol Act (1143/1994). According to that rule, the Authority can prohibit advertising or other marketing or sales promotion measure of alcoholic beverages if the labelling and other presentation of those beverages are not in compliance with the provisions and regulations issued.

The Market Court and a request for a preliminary ruling

Viiniverla appealed to the Market Court and claimed that the use of the name 'Verlados' does not infringe EU law on the protection of geographical indications.

The Market Court felt obliged to request a preliminary ruling and referred three questions to CJ. CJ answered those questions in its decision C 75/15, 21 January 2016.

(1) When assessing where there has been an “evocation” within the meaning of Article 16(b) of Regulation [No 110/2008], should reference be made to an average consumer who is reasonably well informed and reasonably observant and circumspect?

The Article 16(b) does not mention the concept of consumer. However, CJ has ruled in its earlier decisions that, for the purpose of finding the existence of an 'evocation', it is for the national court to verify, in addition to the inclusion of part of a protected name in the term used to designate the product at issue, that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected.

CJ continued by ruling that the purpose of the Regulation is to protect, inter alia, the attainment of a high level of consumer protection. Therefore it is necessary, as the established case-law relating to consumer protection states, to take into account of the presumed expectation of the average consumer, who is reasonably well informed and reasonably observant and circumspect.

CJ then emphasized that the concept of 'consumer' covers European consumers and not merely consumers of the Member State in which the product giving rise to the evocation of the protected geographical indication is manufactured.

(2) When assessing whether to prohibit the use of the name Verlados used to market nationally a spirit drink distilled from apples in order to protect the geographical indication “Calvados”, what importance should be given to the following facts in the interpretation of the concept of “evocation” in Article 16(b) of Regulation No 110/2008 and the application of that regulation:

(a) the first part of the name Verlados, Verla, is a village in Finland whose name may be recognised by Finnish consumers;
(b) the first part of the name Verlados, Verla, refers to the producer of Verlados, Viiniverla Oy;
(c) Verlados is a local product produced in Verla village of which a few hundred litres on average are sold each year in the winery’s own restaurant and a limited amount by order from the State-owned alcohol business referred to in the Law on alcohol;
(d) the words Verlados and Calvados have only one syllable in common (“dos”) out of three, although the last four letters (“ados”) of the words, that is, half of the total number of letter in each word, are identical?

CJ stated, in essence, that the facts a, b and c are irrelevant.

CJ ruled, as it is stated in its own case-law, that it has to be considered whether the products are similar and the sales names are phonetically and visually identical. Furthermore, any evidence that may show that such a relationship is not fortuitous must be taken into account.

With regard to the fact c, CJ ruled that it is irrelevant that ‘Verlados’ is a local product and mostly sold locally because the Regulation applies, in accordance with Article 1(2), to all spirit drinks placed on the market in the European Union.

With regard to the fact d, CJ specified that the referring court must take into account the fact that 'Verlados' and 'Calvados' both contain eight letters, the last four of which are identical, and the same number of syllables, and that they share the suffix ‘dos’, which confers on them a certain visual and phonetic similarity.

(3) If there is considered to be an “evocation” within the meaning of Article 16(b) of Regulation No 110/2008, may the use of the name Verlados nevertheless be authorised on one of the grounds mentioned above or on other grounds, such as that Finnish consumers at least are unlikely to imagine that Verlados is produced in France?

CJ concluded by stating that the wording of Article 16(b) clearly protects GI's from any kind of evocation, even in the absence of any likelihood of confusion. Therefore, the use of the name 'Verlados' can not be authorised if the referring court finds that there is evocation within the meaning of Article 16(b).

The Market Court issued its decision on 31 May.

The Market Court stated that the name 'Verlados' is used in Finland for products similar to those with the protected GI 'Calvados' and that those products have objective characteristics in common, and they are consumed, from the point of view of the relevant public, on occasions which are largely identical.

The court then followed the CJ's guidance and affirmed that there was a clear visual and phonetic similarity between the names.

As for any evidence that may show that such a relationship is not fortuitous, the court stated that Viiniverla had mentioned that it had used an expression "aroma distillation similar to calvados", which shows that the company was very aware of a product named 'Calvados'. Moreover, the suffix 'dos' does not have any specific meaning in the Finnish language.

Therefore, the court ruled that when the average European consumer, reasonably well informed and reasonably observant and circumspect, is confronted with the name 'Verlados' for spirit drinks the image triggered in his mind is 'Calvados', a protected GI.

The court dismissed the appeal by Viiniverla.

The Supreme Administrative Court: Halva's Licorice Carpet Acquired Distinctiveness Through Use

noreply@blogger.com (Author - FinnIPR) — Sun, 12 Jun 2016 12:14:00 +0000

The shape of a product can be a crucial element in order to gain commercial success. One can protect the shape by using different intellectual property rights. The purpose of the protection is to acquire an exclusive right to prevent the competitors from using a similar shape. Trademark protection for the shape, a three-dimensional trademark, can be a strong asset if the requirements for registrability are fulfilled.

Oy Halva Ab (Halva), founded in 1931, is a well-known confectionery manufacturer in Finland. Its specialty are extruded licorice sweets. One of its most popular products is a licorice carpet. In Halva's own words, "the product that is a result of relentless research and development work is known not only for its great taste but also for its unique shape and the three separate layers of liquorice, that you can enjoy one at a time". According to Halva, the product has been in its catalog since 1951.

Halva's licorice carpet.
Application no. T201103700.

In 2011, Halva applied to register the licorice carpet as a three-dimensional trademark in class 30 for a wide range of goods such as coffee, tea, cocoa, sugar, rice, bread, ice creams, salt, mustard and ice. The Patent and Registration Office (PRH) denied the registration (decision 18 July 2012) because the shape was devoid of any distinctive character under section 13 of the Trademarks Act (7/1964). Halva appealed to the Market Court and in its appeal, it specified that it is seeking registration in class 30 only for licorice.

Now it was up to the Market Court (decision 4 April 2014, No. 216/14) to decide whether the licorice carpet is registrable. Before arriving at its conclusion, the Court started its analysis under the section 13 of the Trademarks Act.

The article provides that:

"a trademark must be capable of distinguishing its proprietor's goods from those of others. A mark that denotes either alone or with only few alterations or additions, the kind, quality, quantity, use, price or place or time of manufacture of the goods shall not, as such, be regarded as distinctive. Neither shall a mark be regarded as distinctive, if it is solely composed of a form that is characteristic of the goods, necessary for achieving a technical result or that substantially increases the value of the goods. In assessing whether a trademark possesses distinguishing power, all the factual circumstances shall be borne in mind, particularly the length of time and extent to which the mark has been used."

The court referred to case-law and stated that the criteria of assessing the distinctiveness of shape marks is no different from those for assessing the distinctiveness of other categories of mark. On the other hand, according to the Court, the consumers are not used to perceive the shape of the product as an indication of the origin. Licorice sweets can be categorized as consumer goods and the average consumer does not always pay attention to the shape of these sweets. The Court ruled that the shape of the licorice carpet is not distinctive enough in order to be capable of distinguishing its proprietor's goods from those of others.

Therefore, the licorice carpet is registrable only if it has acquired distinctiveness through use.

Halva had provided evidence that it had produced carpet look-alike licorice for several decades. The Court ruled that this fact alone did not show that the licorice carpet had a distinctive character amongst a significant proportion of the relevant public.

Halva had also provided statements from retailers. According to those statements, the licorice carpet had acquired distinctiveness in Finland. The Court was not convinced and ruled that these statements are not sufficient because the distinctiveness should be judged through the eyes of the average consumer of the goods.

Halva was not ready to give up and appealed to the Supreme Administrative Court. The Court issued its decision (2519/2016) on 6 June.

The Court agreed with PRH and the Market Court and ruled that the shape of the licorice carpet itself is devoid of any distinctive character. After that, it was still necessary to assess whether the licorice carpet had acquired distinctiveness through use.

This time Halva was ready to provide a market survey as an additional evidence of acquired distinctiveness. According to the market survey, 78 % of the respondents (in total, the survey had 427 respondents) recognized the showed licorice product and 64 % (273 respondents) connected it with some company or product name. From those 273 respondents, as much as 65 % connected the product with Halva. Also 3 % of all respondents mentioned a name 'Lakritsimatto' or 'Lakumatto' (both words mean licorice carpet in Finnish and Halva has registered both of them as word marks in the Finnish trademark register) without mentioning Halva. Therefore, the spontaneous (or unaided) awareness was high.

Moreover, out of 427 respondents 61 were unsure whether they connect the product with some company or product name. From those 61 respondents, 62 % connected the product with Halva i.e. they chose Halva from a list that also had other big licorice sweet producers such as Fazer, Panda, Cloetta/Malaco and Kouvolan lakritsi. Therefore, the prompted (or aided) awareness was also relatively high.

The Court paid attention to the fact that the market survey had been done in December 2013. This was two years after Halva had applied to register the licorice carpet as a trademark. The Court ruled, however, that the market survey was valid because the licorice carpet had been in use for a long time and there was no reason to assume that any significant changes had occurred in the reputation of the mark.

The Court concluded that the market survey, as an additional evidence, showed that the licorice carpet is widely recognized by the general consuming public. Therefore, the mark had acquired distinctiveness through use under section 13 of the Trademarks Act. The Court reversed the earlier decisions and the case was sent back to PRH for the registration of the applied mark.

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