Recent Finnish Case Law on Industrial Property Issues

(IPRinfo Special Issue, September 2006)

Compatibility information on packaging did not infringe Gillette’s trade mark
– judgment of the Finnish Supreme Court

The Gillette Company is the proprietor of the trade marks GILLETTE and SENSOR.

Its Finnish subsidiary Gillette Group Finland Oy holds the exclusive right to use those marks in Finland, where it markets various shaving products. LA-Laboratories Ltd Oy was marketing razor blades in Finland under the mark PARASON FLEXOR. Affixed to their packaging was a red sticker with the words ‘All Parason Flexor and Gillette Sensor handles are compatible with this blade’.

The Gillette companies had brought an action against LA claiming that, since blades were not spare parts for a Gillette product, they did not fall within the scope of the exception to the exclusive right in Article 6(1)(c) of the Trade Mark Directive. According to LA, the compatibility information on the packaging facilitated purchase and did not create confusion.

That argument was not accepted by the District Court (2000), which held that LA had infringed Gillette’s exclusive right under Article 4(1) of the Finnish Trade Mark Act. The Court had regarded both the blade and the handle as essential parts of the product. LA appealed to Helsinki Court of Appeal, which regarded replaceable blades as spare parts, as they were substitutes for former parts of a razor. Moreover, the compatibility information on the packaging was justified and as such did not create confusion. The court reversed the decision.

Gillette companies appealed to the Supreme Court of Finland, which referred to the Court of Justice of the European Communities for a preliminary ruling on the interpretation of Article 6(1)(c) of the Trade mark Directive (89/104/EEC) and particularly the question in what circumstances the use of a third party’s trade mark can be seen “necessary”.

According to the European Court of Justice, the use of a trademark by a third party can be considered necessary if it in practice constitutes the only means of providing the public with comprehensible and complete information on the intended purpose of the product in order to preserve the undistorted system of competition in the market. The national court must determine whether in this case such use is necessary. The ECJ also listed types of commercial practices that cannot be regarded honest.
The Finnish Supreme Court held that Gillette’s trade mark had been used in accordance with good commercial practice, and the use had been the only means of providing essential information for the purchaser. The Court dismissed the action. (VS)

Case data:
The Court of Justice of the European Communities, March 17, 2005. C-228/03
The Gillette Company & Gillette Group Finland Oy v. LA-Laboratories Ltd Oy
Directive 89/104/EEC , Article 6(1)(c)
Finnish Supreme Court Judgment, 22.2.2006. KKO:2006:17 (in Finnish only)

Difficult issues of prior rights involved in domain name registration

In the beginning of July 2006 the Supreme Administrative Court of Finland passed a ruling on the issue of what constitutes prior right to a domain name. The ruling is among the first to discuss the interpretation of the Domain Name Act (2003) and it refers to the preliminary works of the Act to justify its conclusions.

The disputed domain name ‘mb.fi’ embodied the letters ‘MB’, a registered trade mark owned by the media company Sanoma Magazines Finland Oy since 2002. MB Rahastot, a Finnish equity firm, had successfully applied for the domain name ‘mb.fi’ (2003). However, after an appeal by Sanoma Magazines, the Administrative Court referred the case back to the Finnish Communications Regulatory Authority (FICORA) ordering them to revoke and transfer the domain name to the appellant. MB Rahastot appealed on the decision.

In the Supreme Administrative Court, MB Rahastot argued that it had a “justified reason” as provided by the law to claim the domain name: firstly, MB had become their trade mark established by use and secondly, MB was the dominant part of the company’s trade name. Sanoma Magazines denied the appellant’s right to the domain name and asserted that the trade mark MB had not been registered to MB Rahastot until after the domain name had been granted. Furthermore, there was no evidence that MB had become established by use. At the time of the registration, Sanoma Magazines had had the exclusive right to the trade mark MB and, consequently, a prior right to the domain name.

The Court found that before being granted the domain name, MB Rahastot had used the sign MB in its business, and that MB was the dominant part of its trade name. In the Court’s view, this constituted a legally relevant basis for the right of MB Rahastot. The scope of FICORA’s authority does not extend to decide on the revocation of a domain name based on trade mark or trade name arguments unless the case is obvious. In this kind of dispute which demands interpretation of trade mark law the parties can seek resolution in a court of justice or settle the matter between themselves.

The Court referred the matter back to FICORA to grant the domain name to MB Rahastot. (VS)

Case data:
Supreme Administrative Court of Finland
Case KHO:2006:41,
Judgment issued on 3 July 2006

See also the article by Annette Kur Trade names – a class of signs “more equal” than others? in IPRinfo 4/2004

Finnish Supreme Court judgment in Budweiser / Budvar trade mark case

The German name for the home town of Budĕjovický Budvar brewery, Budĕjovický (Czech Republic), is Budweis. The expressions ‘Budweiser’ and ‘Budvar’ appear in the brewery’s product documents and trade names, while ‘Budweiser’ and ‘Bud’ are Finnish trade marks for beer registered by Anheuser-Busch, Inc. The companies have been involved in litigation in many countries; the legal issues have revolved around trade mark and trade name protection in light of the Paris Convention, TRIPs Agreement, and the Trade Mark Directive, and the relationship of these two forms of protection.

Anheuser-Busch had brought an action in Helsinki District Court demanding it to prohibit Budĕjovický Budvar from using signs which could be confused with its trade marks. The Court mostly accepted the request and forbid Budĕjovický Budvar to use the signs in its marketing. The Court of Appeal, too, held that the sign ‘Budweiser’ could be confused with the trade marks of Anheuser-Busch, and in addition to marketing it prohibited the Czech company from using the sign in its documents and labels .

Article 8 of the Paris Convention states that a trade name registered in another contracting state is protected without registration if it is at least to a certain extent well known in the relevant trade circles, which might also qualify it to have a “prior right”. The District Court had considered the trade name ‘Budweiser Budvar’ well known whereas the Court of Appeal had not.

Anheuser-Busch appealed to the Finnish Supreme Court, which referred to the Court of Justice of the European Communities for a preliminary ruling on the interpretation of the Trade Mark Directive and the TRIPs Agreement. Especially it asked whether the right of a trade mark owner to prohibit the use of a sign under Article 16(1) of the Agreement extended to trade names as well.

The ECJ answered the question affirmatively. It held that it was up to the national court to decide if the sign was used in a permissible way, that is, as a trade name according to honest commercial practices. Following those guidelines, the Supreme Court permitted Budĕjovický Budvar to use the expression ‘Budweiser Budvar’ in association with its foreign-language trade names and on labels. However, the company may not use the sign ‘Bud’ in marketing and in business documents. (VS)

Case data:
The Court of Justice of the European Communities, November 16, 2004, C-245/02:
http://curia.eu.int/jurisp/cgi-bin/form.pl?lang=en

Anheuser-Busch Inc. v. Budìjovický Budvar, národní podnik
Finnish Supreme Court Judgment, 29.12.2005, KKO:2005:143 (in Finnish only)
http://www.finlex.fi/fi/oikeus/kko/kko/2005/20050143