In May 2008 the Finnish trade mark office rejected the Finnish designation of the international trade mark application by Books on Demand GmbH for the word mark “BoD”. The application covered goods and services in classes 9, 16, 38 and 42. The Finnish trade mark office grounded its decision on the fact that the abbreviation BOD comes from the words “book on demand”, which is a term frequently used in the book printing industry and it is found in several dictionaries. The office stated that the mark “BoD” described the type, quality and purpose of use of the applied goods and services. Accordingly the mark was not able to distinguish the goods and services of the applicant from the goods and services of others. The Board of Appeal of the Finnish trade mark office dismissed the appeal in the case in December 2010.

The matter proceeded to the Supreme Administrative Court of Finland and, in April 2013 the court dismissed the appeal and affirmrd the decision of the Finnish trade mark office and the Board of Appeal of the Finnish trade mark office.

The applicant of the trade mark had presented marketing material and other material from which it is notable that “BoD” refers to the goods and services offered by the Books on Demand GmbH and from which it could be noted that its Book on Demand services had gained popularity and that the mark was well known in Finland.

Amongst the documents there were also articles showing that the "Book on Demand" type of service was known in Finland as long ago as 1996 and that the service was already known in Finland when the company launched its services there. The distinctiveness of the trade mark was evaluated from the moment in which the international registration was designated to Finland in 2006. At that time the BoD service was well known in the industry and hence the mark did not fulfill the requirements for distinctiveness described in Trade marks Act of Finland. Also the fact that the international registration for the trade mark BoD had succeeded in several countries does not have an effect on the evaluation of distinctiveness in Finland.  

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