Seeing that one of the seasons of chocolate is at hand I am returning to an older case in relation to it, which case, however, had not been reported until recently.

On the 28^th of January 2006 the National Board of Patents and Registration of Finland (NBPR) rejected Oy Karl Fazer Ab’s trademark application for the word mark SININEN (meaning the colour “blue”) for chocolates in class 30, as it lacked distinctiveness, and also as it had not acquired distinctiveness through use.

The Board of Appeal refused the applicant’s appeal for the same reason stating that lack of distinctiveness was based on the fact that the word SININEN included all possible shades of blue, and therefore, it was very broad and unspecific.

On the 8^th of November 2007, the Supreme Administrative Court overturned both the above decisions and returned the matter back to NBPR stating that the word SININEN by itself (or with minor amendments) does not describe chocolate in any relevant way. (E.g. the chocolate itself was not blue.) Distinctiveness of the mark should be evaluated based on how well it distinguishes the applicant’s goods from the chocolate products of others. The mark could not be seen to refer to any characteristics of chocolate, and accordingly, there was no need to keep it free for other traders to use. Subsequently, in the spirit of the season, the mark was registered on the 31^st of December 2007.

It should also be noted that the mark FAZER has already been registered on the List of Trademarks with a Reputation in Finland in relation to goods in class 30 and there also is a pending application for registration of a certain shade of colour blue used by the applicant on the same list. (The same shade has already been registered as an ordinary trade mark.)