The Finnish Supreme Administrative Court issued a decision on 15 June 2020 (KHO:2020:73) regarding deceptive trade marks. The Court found that a figurative trade mark containing the Finnish words for “hotel restaurant” was primarily perceived as the name of a hotel-restaurant, therefore describing hotel and restaurant services in class 43.

As the registration only covered services in class 41, the mark was considered to deceive the public.

Background and previous decisions

The applicant, Okun Hotelli Oy, filed a trade mark application for the figurative mark (ured right; in English: “hotel restaurant MALMIKUMPU”) in classes 41 (education services; organizing of training; entertainment services; sporting and cultural activities) and 43 (services for providing food and drink; temporary accommodation). The Patent and Registration Office refused the registration in respect of all services in class 43 on the grounds of a prior trade name, but accepted the registration in respect of services in class 41.

The registration was opposed by Aarrekaivos Oy on the basis of a prior trade name and on the grounds that the mark would deceive the public. The opposition was rejected on both grounds: no likelihood of confusion with the prior right was found, and the Office did not consider the mark to be of such a nature as to deceive the public, because the services covered by the trade mark in class 41 could also be provided in hotels and restaurants.

Following an appeal filed by the opponent, the Market Court overruled the registration of the trade mark as it found the mark deceptive in relation to the services in class 41. In its reasoning, the Market Court referred to the Finnish Trade Marks Act (7/1964) Section 14 Subsection 1 Paragraph 2 (616/2016), according to which a trade mark should not be registered if it is liable to deceive the public. The said section corresponds to Article 4(1)(g) of the Trade mark Directive (EU) 2015/2436, according to which trade marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service shall not be registered or, if registered, shall be liable to be declared invalid.

The Market Court further referred to previous case law, where it was stated that, for the mark to be considered deceptive, the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived was required (Judgment of 30 March 2006, Emanuel, C‑259/04, EU:C:2006:215, paragraph 47).

The decision of the Supreme Administrative Court

The Office appealed the decision of the Market Court to the Supreme Administrative Court inter alia on the grounds that it was unclear whether a trade mark containing a generic name of a specific product category must always be regarded as deceptive for all other goods or services except for those covered by the category name, or whether a trade mark must be regarded as deceptive only if the latter are not included in the scope of protection of the trade mark. Alternatively, the Office questioned whether a trade mark should only be considered deceptive if the trade mark contains a word descriptive of the place where the services are provided and the goods or services are also offered in other premises. The Office emphasized that hotels may offer their clients various additional services beyond accommodation, such as food and drink, parking, laundry services, conference, educational and recreational services, and they should be able to protect the hotel trade mark also for those services.

The Supreme Administrative Court referred to the case-law of the Court of Justice requiring the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived and found that there is no serious risk that consumers will be misled, if the registration also covers goods or services in respect of which the trade mark cannot be regarded as misleading. On a general level, the Court noted that the possible deceptive nature of a trade mark must be assessed, inter alia, on the basis of the nature of the goods or services and their relevant public.

The Supreme Administrative Court concluded that, in the present case, the relevant public will primarily perceive the contested mark as a name of a hotel-restaurant, that is as a trade mark for services in class 43. As these services were not covered by the subject trade mark, the Supreme Administrative Court found that the mark was deceptive in relation to all the services in class 41, and dismissed the appeal.

The decision is likely to tighten up the Finnish practice on deceptive trade marks to some extent, but a serious risk of deceit should only exist if the applied mark is deceptive for the entire scope of the application, so trade mark owners should still be able to register their marks for a wider scope than what the literal meaning of the trade mark would appear to suggest.

By Marjut Alhonnoro, Senior Brand Protection Lawyer, and Eira Heiska, Brand Protection Lawyer, Roschier