And yellow were the pages...

In 1963, following the international trends, Helsingin Puhelinyhdistys (HPY) began publishing a phone directory called “Keltaiset Sivut” (translation: Yellow Pages).

No trade mark applications were filed, but the idea caught on in other areas of Finland as well, and subsequently, a number of different entities began using the mark in their own localities.

In the eighties, the time for a trade mark application was finally ripe, and HPY duly obtained a registration for the mark in 1989. The co-operation between various entities in relation to the publication of “Keltaiset Sivut” was based on various exceptional permits, which all came to an end on the 30th of September 2003.

At that point in time, the parties to the present case, Eniro (the rights follower of HPY and another local entity) and Fonecta (the rights follower of another entity effectively covering rest of the country), began negotiating about possible future co-operation. The negotiations turned out to be unsuccessful, and on the 17th of April 2004 Eniro terminated Fonecta’s right to use the trade mark.

The parties met at the Helsinki District Court with Fonecta requesting the court to confirm that:

  1. It is the co-owner of the trade mark and orders that an entry to that effect should be entered on the Register;
  2. It has a nationwide right to the trade mark through establishment;
  3. It has a perpetual and non-terminable right to use the trade mark; or
  4. That the term of notice for termination of the right to use the trade mark is ten directory seasons.

Helsinki District Court confirmed that Fonecta had a right to the trade mark through establishment, but this was not nationwide. Rather, the establishment had happened in each of the localities where the different entities had used the mark between the years 1963 and 1985. (In Fonecta’s case Finland excluding the parts where Eniro now had rights). Therefore, Eniro could not prohibit Fonecta from using the trade mark. What is more, Eniro had also lost its right to prohibit use of the trade mark due to long period of acquiescence.

However, it does not follow from establishment that the mark would be in co-ownership. Rather, the matter whether co-ownership exists is in the realm of Contract Law. The court concluded that the contractual arrangements were such that co-ownership might exist, but due to Fonecta’s passivity in demanding the entry on the Register, it had lost the right to demand it at this late point in time.

Not pleased with the results, both parties appealed the case to the Helsinki Court of Appeal, which in its decision of 18th of March 2008 (S 06/607) maintained the District Court’s finding that Fonecta had a right to the trade mark through establishment in the above mentioned part of Finland. The court then went on to discuss the contractual side, finding that based on the license agreement, Fonecta had the right to use the trade mark also in the areas where Eniro had rights. However, as such agreements are terminable the right to use would only last until the end of the year 2008. That is, 19 days and counting…

See Fonecta’s ”Keltaiset Sivut” here and Eniro’s ”Keltaiset Sivut” here.

Posted by: Mikael Kolehmainen @ 07.44
Tags: establishment. license agreement, finland, keltaiset sivut,
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