On 15 January the Market Court in Finland delivered decision MAO: 4/15, in which it agreed with the Finnish Trade Mark Office’s view that the international trade mark PARADISO was confusingly similar to the Finnish trade name Paradiso Oy (and thus would not take effect in Finland) with regard to goods in classes 29 and 30. The Finnish Trade Marks Act (Section 14, Subsection 1, point 6) states, inter alia, that a trade mark shall not be registered if it is liable to be confused with the name or protected trade name of another trader, with an auxiliary trade name or secondary symbol of the kind referred to in Section 3(3).

The holder of the international registration, Haugen-Gruppen Denmark A/S, had appealed the Trade Mark Office’s decision to the Market Court and also, during the Market Court process, limited its registration PARADISO (registration number 1063611) to cover "shellfish not live; squid not live; preserved, dried and cooked fruits and vegetables, including preserved artichoke hearts;, artichoke hearts, asparagus, sour pickles, olives, garlic, peppers, pepperoni, pesto and sun dried tomatoes; jellies, jams, compotes, olive oil" in class 29 and "rice, mustard; vinegar, sauces (condiments); spices; all before mentioned, which do not contain cacao and/or chocolate and/or chocolate taste” in class 30.

The registered field of business for the trade name Paradiso Oy on the other hand was “trade, management, ownership, manufacture, repair, rental, transport and consultancy of real property, technical products, raw materials, vehicles, machines, foodstuffs and stocks”. This registered field of business was, as for many businesses, quite wide but one relevant conflict between the trade name and the trade mark took place as the trade mark registration -- even after the limitation -- still covered foodstuffs and the manufacture of foodstuffs which were included in the field of business of the trade name Paradiso Oy.

According to Section 6(1) of the Finnish Trade Marks Act, trade symbols shall be regarded as being liable to cause confusion only if they apply to goods of identical or similar type.

In its appeal, Haugen-Gruppen took the view that the business that only the trade name holder in reality practises should be evaluated when assessing likelihood of confusion, not just the registered field of business. According to Haugen-Gruppen, Paradiso Oy was actually managing apartments and residential buildings. Moreover,the respective businesses were functioning in different stages of production and distribution.

The Market Court took the view that the actual operations of Paradiso Oy did not count in its assessment. It based its analysis on decision 2008 of 30 August 2001 of the Supreme Administrative Court, which stated that. according to established practice, the registered field of business for the trade name creates a basis for evaluating the connection between the goods in cases when the similarity of a trade mark and the prior registered trade name are evaluated.

This being so, the Market Court decided that the goods covered by the trade name and the trade mark were the same or at least similar. Additionally, the international registration PARADISO and the dominant part of the trade name Paradiso were the same. Since the likelihood of confusion between the signs was greater where the goods and services concerned were more similar, and evaluating the likelihood of confusion as a whole, the international registration for PARADISO was confusingly similar with the trade name Paradiso Oy.

The Market Court took a similar view in December 2014 when evaluating the likelihood of confusion between the trade name Sport 2000 Oy and a device mark in its decision MAO: 893/14. As the view of the Market Court seems to be relatively strict in this matter, it is valuable for trade mark applicants to pay attention to existing identical and similar trade names as well as their registered field of businesses before filing trade mark applications in Finland.

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)