It is again time to celebrate the magical Finnish language as the Market Court in Finland has rendered a decision regarding the distinctiveness of the trade mark "Liikkeessä". This word has two meanings in the Finnish language, namely "on the move" and "in the store".

In April 2013 Lidl applied to register as a trade mark the word "Liikkeessä" (application number T201350027) for the following goods and services:

Class 16: "Printed matter, especially prospectuses, brochures, advertising material, periodicals."

Class 35: "Advertising; publishing of printed matter, especially prospectuses, brochures, advertising material, periodicals also in electronic form, for advertising purposes; presentation of products in communications apparatus for wholesale and retail sale purposes"

Class 41: "Publishing of printed matter, especially prospectuses, brochures, advertising material, periodicals, also in electronic form and on the Internet, except for advertising purposes; electronic computer-based folding; provision of electronic, non-downloadable publications online".

The Finnish Trade Mark Office decided in November 2013 that the word "Liikkeessä" lacked distinctiveness for the goods and services in question since it indicated the origin, kind, quality and purpose of use for the goods and services in question. The Office stated that the trade mark "Liikkeessä" means either that the goods and services are offered "Liikkeessä" i.e. in the shop or store or "Liikkeessä" i.e. while you are on the move to somewhere. It accordingly depicts goods and services that are available in a certain place of business, i.e. in the store in relation to the goods and services that are available e.g. only through the internet. Thus the word could not distinguish the goods and services of the Applicant from those of others.

The Office added that the fact that the word "Liikkeessä" has several meanings was irrelevant since it also had meanings describing the goods and services. Further, the cases presented by Lidl to support the application were not analogous to its application. The Office also referred to the word “Liikuntalounas” (in English "exercise lunch") which had been considered non-distinctive in for services in Class 43.

Lidl appealed the decision to the Market Court, submitting that the word was distinctive for goods and services in Classes 16, 35 and 41. Lidl stated that the applied-for mark covered printed matter and advertising related services but did not directly describe them. The average Finnish consumer would link the word "liikkeessä" to things other than printed matter and advertising. Also there was no public interest demanding to keep the word "liikkeessä" free and there were several corresponding marks in the register.

After one round of further arguments, the Market Court evaluated the matter, then based its evaluation on Section 13 of the Finnish Trade Marks Act, which specifies the requirements for registration of a trade mark.

In its decision the Market Court stressed that the goods and services for which the trade mark were sought in Classes 35 and 41 covered also publishing in electronic format and on the internet. Thus, unlike the decision of the Trade Mark Office, the word "Liikkeessä" did not-- at least for these services -- express the fact that the goods or services were offered "Liikkeessä" i.e. in the store or in the shop or that the goods and services would be used while you are on the move to somewhere.

Taking this into consideration, the Market Court stated that the Trade Mark Office should not have rejected the application, at least for services in Classes 35 and 41. Due to this, the Market Court reversed the decision of the Trade Mark Office and remitted the application to it.

The decision of the Market Court (Decision MAO: 458/15, 29 June 2015) can be found here (in Finnish).

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