In a guest post, Suvi Haavisto discusses the recent judgment of the Finnish Market Court on trade mark infringement in Laulumaa Huonekalut Oy v Pohjanmaan Kaluste Oy (MAO:154/18), concerning the use of the women's names SARA, OLIVIA and SOFIA for furniture.

The Market Court of Finland (MAO) gave its judgment on 16 March 2018 in the trade mark infringement case of Laulumaa Huonekalut Oy v Pohjanmaan Kaluste Oy (MAO:154/18).

Furniture seller Laulumaa Huonekalut Oy had filed a trade mark infringement claim with the Market Court against a furniture manufacturer Pohjanmaan Kaluste Oy. The case concerned Finnish trade marks SARA (number 236024), OLIVIA (number 248620) and SOFIA (number 236285) registered for furniture in class 20:

The parties' arguments

Laulumaa claimed that Pohjanmaan had infringed Laulumaa’s trade mark rights by using the names "Sara Bar table", "Olivia Dining table" and "Sara Seatable sofa" in the sales and marketing of its products.

Laulumaa asked the Market Court to confirm the infringement and order Pohjanmaan to cease the infringement. In addition, Laulumaa claimed reasonable compensation for the unauthorised use of the trade marks of €100,000, compensation for the damage caused by the infringement of €100,000, legal fees of €35,804.50 and costs for publishing the judgment of €2,470.

Pohjanmaan claimed that the trade marks had not been distinctive at the date of filing and had not acquired distinctiveness through use either. The names Sara, Sofia and Olivia have been among the most popular names in Finland in recent decades – these names and corresponding forenames have been used for furniture by various entities and it has become established practice to use the names like product numbers, not to indicate their origin.

Judgment

Based on the evidence provided by Pohjanmaan, the Market Court acknowledged that different furniture traders had identified their products using women’s forenames, such as Sara, Olivia and Sofia, even before Laulumaa's trade mark applications were filed. Thus, the Market Court considered that the trade marks may possess distinctiveness only in respect of their figurative elements. Thus, the injunctive scope of the trade mark remains very restricted.

The Market Court considered that Pohjanmaan had used the names in marketing but not the parts that would be even slightly distinctive, ie the figurative elements other than standard font style. The Market Court came to the conclusion that the use of the names did not constitute use of the protected trade marks, and thus there was no trade mark infringement.

Consequently, the Market Court dismissed Laulumaa's claim in its entirety and ordered Laulumaa to cover Pohjanmaan's legal fees in the amount of €29,883.60.

Suvi Haavisto is a brand protection lawyer with Roschier in Helsinki