In the summertime, while enjoying an ice cream in the moderately warm sunshine of the Finnish summer, before it becomes a distant dream, now’s the time to review this quite recent (30 April 2015) decision of the Market Court in Finland that the slogan trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" (registered trade mark number 254065) of Société des Produits Nestlé S.A. may be registered for "ice cream" in class 30. The phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" is a word play fusion of the words "pakastaa" (in English, "to freeze") and "rakastaa" (in English, "to love"). Thus the whole phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" means "the most frozen ice cream in Finland" but has a punning allusion to the meaning of the most loved ice cream in Finland ("Suomen rakastetuin jäätelö").

The opponent in this case opposed the registration of the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" for "ice cream" in class 30 based on the fact that the trade mark lacked distinctiveness for ice cream. The opponent stated that the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" was a slogan which was both a claim or statement in the standard language which as a whole gave the consumer an idea of the kind, quality and purpose of use of the goods. The opponent backed its arguments by introducing other slogan-like trade marks, all of which were figurative trade marks. This, according to the opponent, showed that slogan-like trade marks could be only registered as figurative marks.

The Finnish Trade Mark Office dismissed the opposition and stated that the trade mark was distinctive for "ice cream" in class 30.  The fact that the trade mark is a slogan and contains a claim does not automatically mean that such a mark would not be distinctive. The Office emphasized that slogans are also evaluated as a whole and that the goods applied for, as well as the target consumers, are taken into consideration in order to determine whether the slogan is a trade mark or phrase describing the goods themselves. As ice cream is a consumer product meant to be eaten, being frozen is not a specific characteristic of the product but merely a means to preserve the product. Thus the consumer sees the phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" mainly as a word-play referring to "Suomen rakastetuin jäätelö" which the Office considered to be distinctive.

The opponent further appealed this decision to the Market Court, arguing that accepting the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" for registration would give an unfair position to the trade mark holder in relation to other similar trade mark owners. The opponent further maintained that the word "pakastetuin" (in English, “the most frozen”) clearly refers to ice creams and is an action directly linked to ice creams as being necessary for the purpose of use of ice creams -- and is thus descriptive of the product in question.

Nestlé responded by pointing out the commercial insignificance of the slogan "Suomen pakastetuin jäätelö" and that the phrase merely suggests "Suomen rakastetuin jäätelö". Nor was there any point in keeping the slogan available as there was no competition in the market for the most frozen ice cream and the trade mark was clearly unique and distinctive.

The opponent further stated its firm opinion that the trade mark was not distinctive and that ice cream stops being ice cream once it is no longer frozen. What’s more, this trade mark might also refer to the most frequently purchased ice cream. Finally, said the opponent, the slogan plainly obeyed to Finnish grammar rules and there was no word play.

The Market Court based its evaluation on Section 13 of the Finnish Trade Marks Act, which indicates the requirements for registration of a trade mark, and also took account of Trade Mark Directive 2008/95 and Council Regulation 207/2009 on the Community trade mark as well as legal practice in relation to it.

The Market Court explained that the trade mark would be considered non-distinctive should even one of its possible meanings express the qualities of the product. The reference to freezing might in itself be seen to refer to the qualities of the ice cream. However, the phrase in the form "pakastetuin" (in English, “the most frozen”) is not in use in the marketing of the relevant industry and the average consumer is not accustomed to comparing ice creams on the basis of which one of them is the most frozen. This leads to the fact that the average consumer does not recognize the word "pakastetuin" to refer to the characteristics of the product.  Further, the phrase does not directly or specifically describe ice cream or their qualities and the word-play element is present. The Market Court added that there was no proof that the phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" would be a commonly used phrase in the industry.

In conclusion, the Market Court held that the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" distinguished the goods of Nestlé from those of others and that the trade mark was thus distinctive.

It should be mentioned that this great ice cream battle was not a straightforward case as the decision of the Market Court was not unanimous. Thus we are interested to see whether this goes further to the Supreme Administrative Court.

Market Court Decision MAO: 304/15 can be found here (in Finnish).

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