This case, stemming from the exciting worlds of sports and literature, is almost a year old, but seeing that it had not come to my attention earlier and that, when it did, it caught my interest, I thought it may be worthwhile to mention it here.

Background: on 31 July 2001, Mr S from Kerava, Finland applied to register the trade mark RUNO-OLYMPIALAISET (freely translated POEM-OLYMPICS) in International Classes 16, 35, 36 and 41, with the apparent intention of using it for poem contests. As is the Finnish practice, the application first proceeded to registration, only after which it was published for opposition.

First instance: Suomen Olympiayhdistys ry [which has since changed its name to Suomen Olympiakomitea ry (Finnish Olympic Committee)] and Comité International Olympique filed a timely opposition against the subject registration, basing their opposition on the Finnish trade marks OLYMPIC in class 41 and OLYMPIA in classes 35, 36 and 41, the Community trade mark OLYMPIC GAMES in classes 16, 35, 36 and 41 as well as the purported status of the trade marks OLYMPIC, OLYMPIA, OLYMPIC GAMES and OLYMPIALAISET as trade marks with reputation. On 10 July 2003 the National Board of Patents and Registration of Finland (NBPR) cancelled the registration on the grounds of likelihood of confusion between the mark RUNO-OLYMPIALAISET and the Finnish trade marks OLYMPIC and OLYMPIA and the Community trade mark OLYMPIC GAMES. However, the NBPR also stated that the opponents had failed to prove that any of the marks were trade marks with reputation.

Second instance: Mr S appealed to the Board of Appeal of the NBPR, only to receive a decision rejecting his appeal and upholding the NBPR’s decision. This was a split decision, but one rejecting the appeal nonetheless.

Third instance: unhappy with this decision, Mr S further appealed the case to the Supreme Administrative Court which, as the final instance in trade mark matters, would be the last resort in his case.

During the process at the Supreme Administrative Court the parties brought forward a number of arguments. Mr S observed inter alia that the correct term for “Olympic games” in the Finnish language is “Olympiakisat” and not by any means “olympialaiset”; that Olympia is a name of some geographical locations that Olympias was the mother of Alexander the Great; and that, this being the case, no one should own exclusive rights to such places, history or gods. Accordingly, there could be no likelihood of confusion between the respective marks.

Moreover, Mr S argued that the term “olympialaiset” was in common use in various contexts in Finland and, interestingly, also that, according to the Research Institute for the Languages of Finland (an institute devoted to the study and language planning of Finnish, Swedish, Saami, Finnish Sign Language and Romany, as well as to conducting research on languages related to Finnish), there existed no likelihood of confusion between the terms. Moreover, Mr S stated that he had already registered Runo-olympialaiset as an auxiliary company name, which he had used for years, and that there had been no real instances of confusion between that auxiliary company name and either any sports or the Olympic games.

The Board of Appeal then commented on Mr S’s arguments, stating that there indeed existed likelihood of confusion between the marks. In addition to explaining how likelihood of confusion is commonly assessed and how it applied here, the Board of Appeal also argued that, even though the mark OLYMPIALAISET was not registered, it nevertheless was a famous mark (which would then entitle the mark to protection as a trade mark.) It should also be remembered that this point was not discussed by the NBPR in its original decision. Rather, the NBPR ignored the reputation arguments altogether in the absence of proof of reputation.

One of the more sophisticated arguments brought forward by the Board of Appeal was the reference to “letterboxing”, a sport combining among other things poetry and orienteering which, they stated, could at any given day become an Olympic sport, thus linking poetry and sports together. The respondents also commented on Mr S’s arguments and stated that their well known trade mark with reputation OLYMPIALAISET was a trade mark to which exclusive rights are acquired after it has become established. Again both reputation and damage to that reputation were claimed.

The respondents asked the Supreme Administrative Court to guide the NBPR’s practice by stating that, in certain cases, the reputation of a mark should be taken into consideration ex officio without the claimant having to have to provide evidence of reputation.

On 27 June 2007 the Supreme Administrative Court rejected the appeal. It ignored all the issues on acquired exclusive rights and reputation simply on grounds that the NBPR’s original decision was not based on those issues either. The Supreme Administrative Court also refrained from commenting on the more out-of-the-ordinary arguments brought forward by the parties. Simply put, it was the Court’s opinion that the element “RUNO” (“poem”), even though making the marks visually and phonetically different, was not sufficient to negate likelihood of confusion between the marks.

Afterthoughts: this case raised some interesting points in Finnish practice.

First, in relation to trade marks with reputation, what is quite unique in Finnish practice is the fact that, since 15 August 2007, the NBPR has taken applications for entries on the List of Trade Marks with a Reputation, an entry on which might have assisted the opponents in their arguments on the reputation of their marks. Moreover, there appears to be some confusion as to whether the NBPR should take a mark’s reputation into consideration ex officio or whether reputation is something that should be proved by the party claiming it. The case also hints that there might be some confusion in terms of terminology and the terms “trade marks with reputations”, “well-known marks”, “famous marks” and “trade marks to which exclusive rights are acquired after it has become established” may be used without fully understanding the different nuances associated with them. In short: a trade mark with reputation and related issues appear to be somewhat difficult to handle, and I presume this is by no means a problem in Finnish practice alone.

Secondly, regarding the interplay of trade names and trade marks, applications for trade names (as well as auxiliary trade names) also go through an examination process by the NBPR, but this process is much “lighter” and the applicable standard is not “likelihood of confusion” which we are familiar with from the trade mark examination process. Instead, only very similar prior rights will be cited against trade name applications. However, once registered, a trade name can be cited against both trade name and trade mark applications, and in relation to the latter the trade name is given quite broad protection in contrast to the lower level of scrutiny its own examination was carried out with.