On 15 June 2016 the Finnish Market Court gave its ruling on a fairly significant case involving evaluation of both (i) infringement of a trade mark with a reputation and (ii) unfair business practices.

A Finnish company HKScan Oy ("HKScan"), mainly known for its meat products, demanded in their lawsuit that the Market Court confirms that their EU trade mark registration (No. 005379061, registered 2007 for the "HK logo", illustrated on the right) had become a trade mark with a reputation in Finland since the 2010 or, at the latest, since 2013 primarily for foodstuff and secondarily for meat products.

HK Scan also demanded on a basis of a trade mark infringement that the Market Court prohibit the defendant, Verdener Keks- und Waffelfabrik Hans Freitag GmbH & Co. ("Hans Freitag"), under the threat of a fine, from using its HF logo (also registered as EUTM No. 011473031 in 2013, the "HF logo" illustrated on the left). HKScan's claim was secondarily based on unfair business practices, claiming that Hans Freitag would have taken advantage of the reputation entailed in the HK logo and caused harm to it by using the "HF logo" in Finland for foodstuffs. HKScan demanded reasonable reimbursement of its costs as well as damages.

HKScan used its HK seal logo in Finland especially for its meat products but also for other foodstuffs, such as for ready meals. Hans Freitag on the other hand used its HF logo for example for cookies and bakery products.

The Court first evaluated the question whether the HK logo was a trade mark with a reputation for the proposed goods and services, based on Article 9 (1) of European Trade Mark Regulation 207/2009 as well as the relevant case law in the matter. HKScan had submitted evidence in the form of e.g. marketing materials and market studies to support its case. The Market Court considered that, based on the material before it, a substantial part of the target audience, namely regularly attentive average Finnish consumers, would recognize the product as a symbol for HKScan's meat products starting from the year 2013. As most of the material submitted was related to the meat industry and meat products, the Market Court considered the HK logo not to have reputation for foodstuffs in general.

The Court then evaluated infringement and considered whether there was a link of similarity between HKScan's trade mark with a reputation and the claimed infringing HF logo and whether any harm was done to the trade mark with a reputation.

The Market Court stated that the seal- or quality stamp-type appearance of the marks gives the target audience a somewhat similar impression. However this impression seems to result from the fact that the figurative elements of the marks consist of typical seal shapes and colours used in connection with foodstuffs. As there are differences between the figurative elements, the text elements as well as the "HK" and "hf" parts of the mark, the Market Court considered that use of the HF logo for dry bakery products did not create the necessary association with the HK logo to trigger infringement of a trade mark with a reputation. As there was no infringement of the HK logo, the Market Court stated that there was no need to confirm that the HK logo had a reputation with the judgment between the parties. Thus, the Market Court dismissed the trade mark claims and did not confirm the reputation of the HK logo.

HKScan's unfair business practices claim was based on Section 1 of the Finnish Unfair Business Practices Act on the basis that Hans Freitag had tried to benefit from HKScan's goodwill and reputation by creating an association with the HK logo (in Finnish "norkkiminen", exploitation of goodwill).  Exploitation of goodwill requires that the HK logo enjoys reputation (as well evaluated before) and that the HF logo would create in the mind of the average consumer an association or image of the HK logo. The Market Court was of the opinion that, as the similarities in the general impression of the marks were based primarily on the fact that there is a seal or a quality stamp element in the mark, the target audience would not create an association of the HK logo when looking at the HF logo. This meant that HKScan's claim based on unfair business practices was also rejected.

The decision (in Finnish) can be found by clicking here

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