Here are two recent cases from Finland concerning BULLDOG trade marks

1 BULLDOG v Bulldog device (right)

The first BULLDOG case is on a trade mark opposition against the word mark BULLDOG (no. 240226) by Rinki Ravintolat Oy. The opponent based its opposition on a device mark BULLDOG (no. 259553). Notably, the trade mark cited as the basis for the opposition was registered in classes 32, 38, 42 and 43 and the opposed mark was registered in Classes 29 and 30. The goods of the device mark Bulldog were beer, mineral and aerated waters, non-alcoholic drinks, fruit juices and fruit drinks, syrups and other preparations for making beverages excluding energy drinks or formulated caffeinated drinks (Class 32). The word mark BULLDOG included meat, fish, poultry and game; meat extracts; eggs; edible oils and fats (Class 29) and sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, pastry and confectionery; honey, syrup, east, baking powder, salt, mustard, vinegar, sauces (condiments), spices, hot dogs (Class 30).

The opponent’s goods in Class 32 were similar to the goods of the opposed mark in Classes 29 and 30. In addition, both marks had the word BULLDOG in them.  It was stated that the goods covered by the registrations differed enough from each other for there to be no likelihood of confusion. The Board of Appeal of the Finnish Trade Mark Office rejected the appeal of Rinki Ravintolat Oy and upheld the decision of the Finnish Trade Mark Office.

The Supreme Administrative Court stated that there was no connection between the goods and services concerned regarding Classes 38, 42 and 43 of the mark on which the opposition was based. However, the food products in Classes 29 and 30 were similar to the goods of the earlier mark in Class 32 - especially regarding drinks and fruits and products made from them. The opposing mark consisted of a picture of a dog and of the word BULLDOG, of which neither element was dominant —but they strengthened each other as they both referred to the same kind of dog. The opposed mark consisted only of the word “bulldog”, which might mislead consumers to think that the goods derived from the same undertaking or that they would have an economic link with one other even though they were similar products. The Supreme Administrative Court of Finland annulled the decisions of the Finnish Trade Mark Office and its Board of Appeal, remitting the matter to the Finnish Trade Mark Office.

2 BULLDOG device v BULLDOG device

In the second BULLDOG case, Oy Wikholm Food Trade Ltd had registered a trade mark BULLDOG HODARIEN KUNKKU (no. 240225, illustrated on the left) in Classes 29 and 30. The Finnish Trade Mark Office rejected the opposition of Rinki Ravintolat Oy on the basis of its device mark BULLDOG (no. 239553, reproduced in Case 1, above). The Finnish Trade Mark Office stated that the trade mark on which the opposition was based did not cover identical or similar goods in Classes 38, 42 and 43 to the goods of BULLDOG HODARIEN KUNKKU and that there was therefore no likelihood of confusion between the marks. Classes 38, 42 and 43 covered services, while the opposed mark consisted of goods in Classes 29 and 30. Even though the opponent’s goods in class 32 were similar to the trade mark owner’s goods in classes 29 and 30, the Finnish Trade Mark Office was of the opinion that there was no likelihood of confusion between the marks. The Board of Appeal of the Finnish Trade Mark Office rejected the appeal made by Rinki Ravintolat Oy.      

Rinki Ravintolat Oy based it case the fact that goods and services could be compared with each other even though they were not part of the same goods or service Class. They argued that the real likelihood of confusion should be a decisive factor before the strict classification. The Board of Appeal of the Finnish Trade Mark Office stated that normally goods are not similar when compared with services. The Board of Appeal stated that the goods in classes were mainly for preparation of food while class 32 contains of different kinds of drinks. Hence –despite of the dog theme – the marks were not confusingly similar.

The Supreme Administrative Court of Finland stated that goods and services are considered similar only on special occasions and that, in this case, there was no close enough connection that there would exist likelihood of confusion in relation to Classes 38, 42 and 43. With regard to the goods in Classes 29 and 30 the goods were similar to the goods of the mark of which the opposition was based in class 32.

The Court stated that the mark on which the opposition is based consisted of parts that strengthened each other and that, in relation to Class 32, the mark was not weak. The impression of the trade marks as a whole was similar and the consumer might confuse the goods with each other. The Supreme Administrative Court stated that the goods were confusingly similar in classes 29, 20 and 32. The Supreme Administrative Court of Finland annulled the decisions of the Finnish Trade Mark Office and the Board of Appeal of the Finnish Trade Mark Office and remitted the matter to the Finnish Trade Mark Office.

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