Trade mark registrations in the confectionery business may sometimes be quite tricky -- at least when the competitor company is active in the trade mark field. The Finnish Trade Mark Office, back in February 2006, registered the trade mark LAKUMIX (registration number 241697) for Oy Panda Ab for goods in class 30.  In Finnish, “laku” is a nickname used for liquorice and “mix” naturally refers to a mix of some sort (in this case a mix of confectionery products).

In September 2009 the Office rejected an opposition by Cloetta Fazer Suklaa Oy (“Fazer”) regarding the registration (the biggest names in the Finnish confectionery sector are Fazer and Panda). Fazer had not in its opposition submitted any proof that the mark LAKUMIX would not have acquired distinctiveness through use. Additionally, Panda had in its reply to the opposition narrowed the registration to cover only “sweets that contain liquorice”. The Offce did point out that LAKUMIX was descriptive for the goods for which registration was sought, but added that the term “lakumix” was not in general use and Panda had submitted proof, such as statistics, that proved the distinctiveness through use of the trade mark since 2003.

The Board of Appeal of the Finnish Trade Mark Office agreed with the earlier Office ruling and dismissed Fazer’s appeal in March 2012.

The Supreme Administrative Court however reversed the decisions of the Finnish Trade Mark Office and the Board of Appeal, remitting the issue to the Office and cancelling the trade mark registration LAKUMIX. The court stated that, as the trade mark LAKUMIX was so highly descriptive for the goods for which it was registered, the proof of use would have to be especially strong in order for the mark to possess acquired distinctiveness.

The proof that Panda submitted included, for example, testimonies that the mark was distinctive through use since 2003 (these were based on the perception of the person signing, at the time of signing the testimony, which was March 2008). Additionally, there were surveys made in 2008, 2010 and 2012. The Court stated that these surveys were not sufficient when evaluating distinctiveness at the time of registration.  Also the material on the acquired distinctiveness of the trade mark “PANDA LAKUMIX” did not support the issue at hand and the acquired distinctiveness of the trade mark without the word PANDA was not clearly shown. Based on these reasons, the Court decided that there was not enough evidence to prove that the mark “LAKUMIX” would have become distinctive through use by the date when the registration was applied for. 

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