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OMINTAKEINEN MAKEINEN: overcoming trouble with word play registration in the confectionery field

As Christmas is approaching, there is always room for another candy themed trade mark registration case. The Finnish Trade Mark Office originally rejected an application by Oy Panda Ab for the trade mark OMINTAKEINEN MAKEINEN for the class headings in class 30 based on the fact that the mark lacked distinctiveness. The word “omintakeinen” in Finnish refers to something that is unique or original and “makeinen” in Finnish refers to confectionery. The words rhyme together quite nicely and thus create a wordplay or slogan that Oy Panda Ab wished to register.

The Office found that the trade mark OMINTAKEINEN MAKEINEN referred to an original, individual and peculiar product of sugar, cocoa or other such ingredient molded into a firm form and was therefore descriptive for sweets and sweet-like products such as pastries, sweets and ice cream. The Office also considered that the mark lacked distinctiveness for other products included in the application as they may also include sweetness of sweet things that can be regarded as unique. All in all the Office stated that the trade mark indicated the type, quality and purpose of use for the goods in question.

The Board of Appeal of the Finnish Trade Mark Office dismissed Oy Panda Ab’s appeal and stated that the material the applicant provided did not prove that the mark would have been used widely enough and for long enough to have acquired distinctiveness.

The Supreme Administrative Court, however, took a different stand in this issue and reversed both the decisions below, remitting the trade mark OMINTAKEINEN MAKEINEN to the Office for registration.

The Court stated that class 30 contains different kinds of groceries out of which for sweets the generic word “makeinen” is clearly not distinctive. However the word “omintakeinen” is different. It does not describe any sweets or any other goods in class 30 and is merely suggestive. Additionally it is used creatively in the marketing and it is not common to use the word for the marketing of such products. The applicant had referred to similar accepted registrations such as VIISASTEN TEE (in Finnish “tea of the wise”) and MAINIO MAKEINEN (in Finnish “splendid candy”). The court stated that the trade mark OMINTAKEINEN MAKEINEN takes the role of wordplay and is thus more than just a describer and advertising phrase for the goods in question. Based on these views, and on the report of the use of the mark as a slogan submitted by the applicant, the trade mark OMINTAKEINEN MAKEINEN (registration number 259789) was considered to be distinctive and thus registrable.

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

Posted by: Blog Administrator @ 01.07
Tags: Finland, registrability, descriptiveness, wordplay,
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