The Supreme Administrative Court of Finland published in May 2013 a decision regarding a registration of a biscuit as a trade mark. This was a special occasion in Finland, it being the first time that the Supreme Administrative Court of Finland has published a precedental decision on the appearance of a product as a trade mark.

Originally the National Board of Patents and Registrations and the Board of Appeal both refused the trade mark application, rejecting the argument that the mark’s distinctiveness was both inherent and acquired. They held that the shape was not sufficiently different from other biscuit shapes that existed in the market for the mark to be recognized as an indication of origin.  Distinctiveness was also rejected since evidence on acquired distinctiveness was submitted a year after the application date.

There were two main issues in this case. The first was naturally the assessment of whether the shape of the well-known Carnival biscuit could be registered as a trade mark.  The Supreme Administrative Court of Finland allowed registration of the mark as it had acquired distinctiveness through longstanding and extensive use. Carnival biscuits have been in the Finnish market since 1925, bearing the same name and also having the same shape and appearance as the applicant’s trade mark.  In the application the graphic representation of the product depicted a square with wavy edges and a film-like surface.

The second main issue in the case was the extensive evidence that the applicant had provided in order to prove acquired distinctiveness as well as the market survey that was interestingly provided a year after the application had been filed. The Supreme Administrative Court of Finland held that the market survey was admissible, basing its decision on the fact that the period after the application date of the trade mark had not deprived the submitted data of its evidential value and that the level of awareness that the market survey shows was not caused by any marketing efforts conducted that year. Also there were no major changes in the Finnish biscuit market that could have changed the Court’s conclusion in the matter.

The survey proved that 72 percent of respondents recognized the biscuit, based on its appearance. Also, 72 percent of the respondents linked the shape with the name of the product in question as “Carnival”.

 Class 46 thanks Tiina Komppa (Rochier) for providing us with this note.