CLASS 46
Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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WEDNESDAY, 27 NOVEMBER 2013
OLYMPIALAISET in Finland
In Finland, there has been quite an interesting ruling on the distinctiveness of the trade mark OLYMPIALAISET (in English: “The Olympics”), for which an application was filed by the Finnish Olympic Committee.
Initially, in November 2007, the Finnish Trade Mark Office rejected the application to register the word mark OLYMPIALAISET for goods and services in classes 28, 35, 38 41 and 43. It was especially good to note that in Class 41 the services for which registration of the mark was refused were the following:
Tags: Finland, Olympic mark, descriptive character,
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OLYMPIALAISET in Finland
Initially, in November 2007, the Finnish Trade Mark Office rejected the application to register the word mark OLYMPIALAISET for goods and services in classes 28, 35, 38 41 and 43. It was especially good to note that in Class 41 the services for which registration of the mark was refused were the following:
education; providing of training; entertainment; sporting and cultural activities.
In other classes the goods and services were of wide variety but specified, for example, appliances for sports and gymnastics in class 28 and wholesale and retailing services for appliances for sports and gymnastics in class 35. The reason behind the rejection was that the word OLYMPIALAISET lacked distinctiveness in that The Olympics is a well known sports event. The applicant appealed to the Board of Appeal of the Finnish Trade Mark Office, which dismissed the appeal, also considering that the mark lacked distinctiveness; no distinctiveness through use was sufficiently proved.
The interpretation of the issue took a different turn on appeal to the Finnish Supreme Administrative Court. The Court stated that the Finnish Patent and Trade Mark Office had misinterpreted the Trade Marks Act: the word OLYMPIALAISET was not an expression of the kind of goods and services in question and could therefore be registered on the same grounds as other trade marks. In the Court's opinion the legislation was not familiar with the idea that registration of a trade mark could be rejected on the grounds that the trade name is a sports event.
Significantly, the distinctiveness of the mark is evaluated in relation to the goods and services specified in the application. According to court practice, a mark is not to be registered when it merely describes the goods and services for which the trade mark is applied and when the word needs to be free to use for the competitors in the field. In conclusion, the Supreme Administrative Court stated in its decision of 3 April 2013 that the Finnish Trade Mark Office should not have rejected the application without evaluating the word in relation to the goods and services it is applied for. The decisions of the Trade Mark Office as well as the Board of Appeal of the Finnish Trade Mark Office were annulled and the matter was remitted to the Finnish Trade Mark Office.
What can be found quite peculiar is that, on 30 April, the Finnish Trade Mark office then registered the trade mark OLYMPIALAISET for all the goods and services for which registration was sought. This means that, in the list of goods and services for example, sporting and cultural activities are still included even though the main point of the judgment supposedly was to exclude these kinds of descriptive goods and services from the list of goods and services, leaving only the non-descriptive goods and services on the list.
The interpretation of the issue took a different turn on appeal to the Finnish Supreme Administrative Court. The Court stated that the Finnish Patent and Trade Mark Office had misinterpreted the Trade Marks Act: the word OLYMPIALAISET was not an expression of the kind of goods and services in question and could therefore be registered on the same grounds as other trade marks. In the Court's opinion the legislation was not familiar with the idea that registration of a trade mark could be rejected on the grounds that the trade name is a sports event.
Significantly, the distinctiveness of the mark is evaluated in relation to the goods and services specified in the application. According to court practice, a mark is not to be registered when it merely describes the goods and services for which the trade mark is applied and when the word needs to be free to use for the competitors in the field. In conclusion, the Supreme Administrative Court stated in its decision of 3 April 2013 that the Finnish Trade Mark Office should not have rejected the application without evaluating the word in relation to the goods and services it is applied for. The decisions of the Trade Mark Office as well as the Board of Appeal of the Finnish Trade Mark Office were annulled and the matter was remitted to the Finnish Trade Mark Office.
What can be found quite peculiar is that, on 30 April, the Finnish Trade Mark office then registered the trade mark OLYMPIALAISET for all the goods and services for which registration was sought. This means that, in the list of goods and services for example, sporting and cultural activities are still included even though the main point of the judgment supposedly was to exclude these kinds of descriptive goods and services from the list of goods and services, leaving only the non-descriptive goods and services on the list.
This post was prepared for Class 46 by Tiina Komppa (Roschier). Thanks, Tiina!
Posted by: Blog Administrator @ 10.30Tags: Finland, Olympic mark, descriptive character,
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