On 2 April 2019, the Market Court of Finland issued a decision in a trade mark opposition case between H-D U.S.A., LLC and PK Product Oy regarding the trade mark H-DFI in Finland (MAO:153/19). Suvi Haavisto summarises the case for Class 46.

Background

A Finnish company PK Product Oy (the applicant) had registered the word mark H-DFI in Finland for the following services in class 38: "Internet-based telecommunications services; Telecommunication by email; Telecommunication services provided via the Internet, intranet and extranet."

The registration was opposed by an American company H-D U.S.A., LLC (the opponent), famous for its Harley-Davidson brand, on the basis of four prior EUTM registrations for the marks H-D and HD.

Previously, the applicant had been a retailer of Harley-Davidson products in Finland and registered the domain name h-d.fi. When the co-operation ended, the parties had a dispute concerning the ownership of the domain name. According to the applicant, the trade mark H-DFI was registered to support the domain name, which remained with the applicant.

The opponent's prior registrations did not cover the same class, and the Finnish Patent and Registration Office (PRH) found that there was no likelihood of confusion or other grounds for refusal. The opposition was rejected and the opponent filed an appeal with the Market Court.

Market Court judgment

The Market Court noted that the questions in this matter, based on the opponent's claims, concerned whether there exists a likelihood of confusion between the marks, whether the opponent's prior marks were considered well-known and whether the trade mark H-DFI should be refused as being filed in bad faith.

First, the Market Court noted that the registrations cover different classes and stated that the fact that the goods and services of the opponent may be offered and marketed over the Internet does not mean that they are complementary to each other. The trade mark H-DFI does not even cover advertising and marketing services. Due to the dissimilarity of the goods and services, the Market Court concluded that there was no likelihood of confusion between the marks.

The opponent also claimed that its prior EU trade marks are well known in Finland. In support of its claim, the opponent provided testimonies signed by persons with experience in the import or resale of Harley-Davidson products in Finland. The Market Court noted that whether the mark Harley-Davidson is well known in Finland has no independent relevance when assessing the recognition of the H-D or HD marks. The opponent's marks were not proved to enjoy the protection of a well-known trade mark in Finland.

When assessing the bad faith, relevant factors include that the applicant knew or must have known that a third party is using an identical or similar mark for an identical or similar product, the applicant’s intention to prevent that third party from continuing to use such a mark, and the degree of legal protection enjoyed by the marks. The Market Court acknowledged that the applicant knew that the opponent was using the marks H-D and HD. However, the goods and services were dissimilar and the applicant did not intend to prevent the opponent from using its mark. The mark had been registered to support the existence of the domain name h-d.fi. The court considered that the mark was not filed in bad faith.

Consequently, the Market Court rejected the appeal. The decision can be found here (in Finnish). However, the decision is not final, as an appeal has been filed with the Supreme Court of Finland.

Suvi Haavisto is an attorney-at-law with Roschier in Helsinki

Readers may be interested in the following events hosted by EUIPO and WIPO in the next few months:

• International Conference on “IP and Development – How to Benefit from the IP System” organised in the context of WIPO’s Development Agenda at WIPO headquarters in Geneva on 20 May. There will be interpretation in the six UN languages and the conference will also be webcast. Registration is available here.
• Second IP Mediation Conference being held at EUIPO’s office in Alicante on 30 to 31 May. The conference will be held in English, with French and Spanish translation available. More details and registration here.
• “AI: decoding IP” – an international conference on IP and AI, organised by WIPO and the UK IPO at the London Stadium, Stratford, London on 18 to 19 June. Full details and registration here. The event will also be live streamed.
• Tertulia on “EUIPO Boards of Appeal Trademarks and Designs Dispute Resolution and Case Law” taking place in Brussels on 26 June. This will be hosted at the EUIPO Liaison Office in Brussels, starting with a snack reception at 13:00. Limited places are available and can be reserved by sending an email, including your full name and ID/passport number, to Tertulia-Brussels@euipo.europa.eu

There are still some places available at two roving seminars being hosted by WIPO in collaboration with INPI in France next week. They take place in Strasbourg (14 May) and Paris (16 May).

The seminars are in French and provide information on international IP protection and WIPO-administered services covering a range of IP rights. 

As well as presentations and panel discussions, there will be opportunities for networking during the coffee and lunch breaks.

Registration is free and Class 46 readers are welcome to register online via the dedicated page (in French) which also includes details of the programme and speakers for both seminars.

Future roving seminars are due to be held in Portugal and Finland; more information is available via the link above.

Registration for the 33^rd Annual Conference is now open. The Conference will be held in Dublin, Ireland from 17 to 20 September 2019 and will feature panel sessions, workshops and social activities.

The theme of this year’s Conference is “Brands Confronting Change”. Gregor Vos, who chairs the team that has put together the programme, says: “There is so much happening in the world and so much uncertainty and unpredictability. We will be asking: What does this mean for brands and for the IP profession?”

The first part of the Conference will tackle some of these questions head on. It will start with a keynote speech by Jan Willem Velthuijsen, who is Chief Economist at PricewaterhouseCoopers. “He will give us some broad horizons about what is happening in the world, and then we have speakers from Design Bridge and Virgin Enterprises who will reflect on them in more depth,” says Gregor.

Other sessions during the conference will pick up the theme. One, for example, will look at the effect of changes in technology, marketing and communication and will feature a presentation from a representative of Dropbox on how such changes affect a fast-developing brand. Another will look at whether tax havens have a future – a topic that is particularly relevant in Ireland, where many high-tech companies have set up European headquarters.

Another aspect of change is globalisation and the opportunities it raises for IP disputes, so a session at the Annual Conference will focus on damages in trade mark infringement cases. Speakers will compare and contrast the law and practice in the UK, US, China, France, the Netherlands and the Middle East.

“We are living through significant political changes, including the rise of nationalism in some countries, as well as major shifts in economics and business,” says Gregor, who attended his first MARQUES Annual Conference in Budapest in 2001. “In this environment, brands can emerge rapidly – but also decline quickly. And their value can go up and down. I hope we will get some good insights into how marketers, IP professionals and others deal with the challenges these questions raise.”

Gregor Vos

The Annual Conference will also feature sessions on geographical indications and designs, an update from EUIPO one year on from the EU trade mark reforms and a review of CJEU and General Court case law. There will be four workshops on Thursday afternoon for delegates to choose between; more details about these will be published on the MARQUES blogs soon.

The Conference will be hosted at the Citywest Hotel, which is set in 240 acres of parkland and is close to Dublin City Centre and Dublin Airport. It also includes a leisure club and 18-hole golf course. “It’s a great conference hotel and will provide everything that members have come to expect from a MARQUES conference, including lots of networking opportunities in an informal atmosphere,” says Gregor. The traditional Cultural Evening on Wednesday night will be held at the Guinness Storehouse in Dublin.

Find out more about the Annual Conference, and register your place, on the dedicated page. The Members’ Early Bird rate is available until Friday 28 June 2019.

Readers might be interested in a webinar that WIPO is hosting on 9 May, which ties in with the theme of this year's World IP Day. The following information is from Leandro Toscano, Head, Business Development Unit,
WIPO Arbitration and Mediation Center:

Disputes in the sports arena often relate to IP rights, including highly valuable trademarks, patented technologies, and copyright and related rights. Such disputes may arise in the context of, for example, licensing and distribution of sports goods, sports broadcasting and media, sponsorship, merchandising and endorsement agreements.

Although IP and sports-related disputes can be resolved through court litigation, parties are, with increasing frequency, submitting disputes to mediation, arbitration or other ADR procedures.

The WIPO Arbitration and Mediation Center offers ADR options to enable private parties to efficiently settle their domestic or cross-border commercial disputes. The WIPO Center is international and specialized in IP and technology disputes, including growing number of sports-related disputes.
 
In this webinar, you will learn how to benefit from WIPO’s ADR services in order to reduce the impact of IP and sports-related disputes.
 
Who should attend this webinar? Sports goods manufacturers, sports organizations and federations, broadcasters and media companies, sponsors, athletes, business executives, other IP owners and their legal counsel.

For more information, visit the dedicated page on the WIPO website.

Readers attending the 141st Annual Meeting of the International Trademark Association (INTA) at the Boston Convention and Exhibition Center in Massachusetts (USA) from 18 to 22 May may be interested in the following information from WIPO:

Madrid System Users' Meeting

Date: Sunday, May 19 (10:15–12:00)

Venue: Room 258A

A unique opportunity to engage directly with WIPO experts and special guests.

Highlights:

• Updates on the Madrid System for the International Registration of Marks and the Hague System for the International Registration of Industrial Designs – with Registry Directors David Muls and Grégoire Bisson
• A session with trademark representatives on the Better Use of the Madrid System: Online Services for the Maintenance of Rights with the Madrid Information and Promotion Division Director Ásta Valdimarsdóttir
• Introducing newly acceded members, with representatives from:

1. Canada – A representative of the Canadian Intellectual Property Office;
2. Malawi – Chifwayi Chirambo, Chief Assistant Registrar General, Department of the Registrar General;
3. Samoa – Pulotu Lyndon Chiu Ling, Chief Executive Officer, Registrar, Registries of Companies and Intellectual Property Division (RCIP).

More details here.

The WIPO Booth

Meet WIPO experts and representatives of members' IP offices and get answers to all your questions about the Madrid and Hague Systems, at the WIPO booth (no. 101) in the Exhibition Hall A.

You can also learn more about the upcoming Domain Name Conference and get the latest on IP dispute resolution from the WIPO Arbitration and Mediation Center.

Online services demos

Online services demo sessions at the WIPO booth return for 2019. We’ll be showing off our recently launched AI-powered image-search technology – a faster and easier way to establish trademark distinction in target markets and our new Madrid e-Renewal service.

Demos include:

Search before filing with WIPO’s Global Brand Database: new AI image search

• Monday, May 20 (10:30 – 11:00)

Overview of Madrid online services

• Monday, May 20 (11:30 – 12:00)
• Monday, May 20 (15:30 – 16:00)
• Tuesday, May 21 (10:30 – 11:00)
• Tuesday, May 21 (15:30 – 16:00)
• Wednesday, May 22 (11:30 – 12:00)

Compile and translate your list of goods and services

• Tuesday, May 21 (14:30 – 15:00)

Manage and renew your international registration: Madrid Portfolio Manager and e-Renewal service

• Monday, May 20 (14:30 – 15:00)
• Tuesday, May 21 (11: 30 – 12:00)
• Wednesday, May 22 (10:30 – 11:00)

REGISTER NOW

Table Topic sessions

Your chance to discuss a wide range of contemporary topics within small groups of like-minded professionals over breakfast or lunch – and enjoy some great networking opportunities:

The Madrid System: Common Pitfalls and how to Avoid them

Ásta Valdimarsdóttir, Director, Madrid Information and Promotion Division, Madrid Registry

Monday, May 20 (08:00 – 10:00)

Room TM26

Protecting Industrial Designs Internationally: The Hague Agreement concerning the International Registration of Industrial Designs

Grégoire Bisson, Director, Hague Registry

Tuesday, May 21 (08:00 – 10:00)

Room TT26

How to Resolve your IP Dispute through WIPO ADR

Erik Wilbers, Senior Director, WIPO Arbitration and Mediation Center

Wednesday, May 22 (08:00 – 10:00)

Room TW24

Domain Name Disputes: an Update on WIPO UDRP Jurisprudence – including GDPR-related Issues

Brian Beckham, Head of the Internet Dispute Resolution Section, WIPO Arbitration and Mediation Center

Wednesday, May 22 (13:15 – 15:15)

Room TW71

The Finnish Trade Marks Act will be fully reformed. The new Act was ratified by the President of Finland on 26 April 2019, and it will come into force on 1 May 2019.

Although the main driver for the reform has been the implementation of the new EU Trade Mark Directive ((EU) 2015/2436) and Singapore Treaty (Singapore Treaty on the Law of Trademarks 2006), the reform is most welcomed, since the previous Trade Marks Act was enacted in 1964. Even though there have been a number of partial reforms of the Act over the years, its structure is somewhat outdated and unclear and the provisions do not fully comply with the EU case law.

The new Act will introduce several significant changes to opposition and invalidation proceedings, requirements for the specification of goods and services, representation requirements of a trade mark, treatment of goods in transit, and more.

Requirement to amend the lists of goods and services of registrations registered before 2014 containing Nice class heading

According to the old Finnish trade mark practice, trade mark registrations that contain a Nice class heading in the list of goods and services enjoy protection for all goods and services falling into that specific class. This interpretation was changed on 1 October 2012 for new applications as a consequence of the CJEU’s decision in the IP TRANSLATOR case (C-307/10).

For applications filed between 1 October 2012 and 31 December 2013, the applicants were able to use the Nice class heading as a part of the lists of goods and services, and make an additional claim according to which the application is intended to cover the full Nice alphabetical list of goods/services of that specific class.

For applications filed after 1 January 2014, where the application contain only the Nice class heading in the list of goods/services, the scope of protection is limited to those goods and services that are clearly covered in the literal wording of the class heading.

As a consequence, it has become difficult to interpret the actual scope of protection of a Finnish trade mark registration containing a Nice class heading in the list of goods and services, as this depends on when the application was filed.

In order to clarify the current situation, the new Act offers an opportunity to specify the lists of goods and services of those trade mark registrations that were filed before 1 January 2014 with a full Nice class heading (or a class heading and a claim that the full Nice alphabetical list is covered).

The owners of those registrations can specify the list by listing all goods/services falling into that class that were intended to be covered by the registration. Unlike the similar reform made to EUTMs, the list is not restricted to cover only those goods and services that were included in the Nice alphabetical list at the time of the filing of the application (except for those applications that were filed between 1 October 2012 and 31 December 2013 and that contain a reference to the Nice alphabetical list).

The final deadline for requesting the specification is the first renewal of the registration after the enactment of the new Act. If no specification is requested, the scope of protection of the trade mark registration is limited to those goods and services that are clearly covered in the literal wording of the class heading in question. This does not, however, apply to applications filed between 1 October 2012 and 31 December 2013 containing also references to the Nice alphabetical list. If the owner of such a registration does not request specification, the Office will confirm that each class of the registration covers all the goods and services of the Nice alphabetical list and remove references to the Nice alphabetical list.

It is notable that the requirement also applies to International Registrations that were designated to Finland before 1 October 2012 and that cover a full Nice class heading in their list of goods and services.

Administrative invalidation and revocation of trade mark and trade name registrations

According to the old Trade Marks Act, trade mark and trade name registrations could only be invalidated or revoked by the Market Court. The new Act introduces the possibility to file an administrative invalidation or revocation action against a trade mark or trade name registration.

If the administrative action is filed, the decision is made by the Finnish Board of Patent and Registration, with a Market Court as the appeal court. The invalidation or revocation action may also be filed directly with the Market Court. If an action is filed in both instances, the Board of Patent and Registration has to cease examination of the action, and the matter will be decided by the Market Court.

The revised Trade Name Act also enables the partial invalidation of trade names on the basis of five years of non-use, which was not possible in accordance of the old Act.

Reformation of opposition proceedings

As part of the implementation of the Directive, the new Act streamlines the trade mark opposition proceedings by making it possible for the applicant to request the opponent to prove the use of an earlier right that has been registered more than five years ago.

According to the old Trade Marks Act, the validity of the earlier right could only be questioned by filing a non-use invalidation action against it.

The new Act also introduces some additional changes to the opposition proceedings, including the possibility for the parties to request a suspension of the proceedings by a joint request.

Changes to the representation of the mark

The new Act abolishes the requirement for the graphical representation of a mark. According to the new Act, a trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

distinguishing the goods or services of one undertaking from those of other undertakings; and

being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

In addition, the new Act limits the scope of protection of the new black and white figurative marks, which in the future will only cover black and white versions of the mark. The new provisions have no impact on the old black and white registrations, which continue to protect all colour variations of a figurative mark.

Goods in transit

The provisions regarding goods in transit have been clarified in accordance with the Directive.

According to the new Act, a trade mark owner can prevent all third parties from bringing goods into Finland, even if the goods are only in transit, if such goods bear an identical or similar mark. However, this entitlement lapses if the holder of the goods provides evidence that the trade mark owner is not entitled to prohibit the placing of the goods on the market of the country of final destination. 

Conclusions

The new Act provides welcome clarification to the Finnish trade mark system, and it is expected to smoothen and streamline several parts of the trade mark proceedings – including opposition, invalidation and revocation actions.

However, especially the provisions regarding the specification of the lists of goods and services of trade mark registrations containing Nice class heading put a lot of pressure on the holders of old Finnish trade mark registrations (and International Registrations designating Finland). It is vital to ensure that the scope of protection of old trade mark registrations is not inadvertently narrowed.

Post written for Class 46 by Kaisu Korpua and Markku Tuominen of Roschier, Helsinki