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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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FRIDAY, 9 JANUARY 2009
Establishment of a Factory

In one more recent case involving trade mark establishment, Eppu Normaali Oy (ENO), a company formed by the members of the famous Finnish band Eppu Normaali having performing arts as its main field of business, brought an action against Akun Tehdas Oy (ATO), a company having other business consulting as its main field of business, requesting the Helsinki District Court to:

i)
revoke the Akun Tehdas Oy trade name; and
ii)
declare ATO’s registration for the trade mark AKUN TEHDAS invalid.


ENO claimed that it had acquired exclusive rights to the commercial symbol AKUN TEHDAS through establishment before ATO’s registrations. (Translation: “Akun Tehdas” translates to “Aku’s Factory” in English. Incidentally, Aku also is the first name of the band’s drummer, who also is the CEO of ENO.)


First, the court confirmed that ENO had right of action in this case. The members of the in 1976 formed band had carried on business as a general partnership or a group, which business had been incorporated in 1990. The commercial symbol AKUN TEHDAS belonged to the band, which had used it since 1980 (name of an album and one song on the album). Also the copyright to the composition “Akun Tehdas” belonged to ENO and its share holders. Second, the court confirmed that taking into account all the facts the word pair AKUN TEHDAS had become established already in the 1980’s. Third, there was no business being carried out under the trade name, which would enable the court to revoke the trade name based on that fact alone.


Accordingly, the court revoked the trade name and declared the trade mark registration invalid.


In its decision of 2nd of June 2008 (S 06/3451) the Helsinki Court of Appeal denied ATO’s appeal and maintained the lower court’s decision for the most parts.


As to the right of action, the court confirmed that ENO could indeed refer to affairs of the band before its incorporation. ENO also suffered prejudice due to ATO’s trade name and trade mark registrations, which fact is mentioned as giving the right of action both in the Act on Trade Names and the Trademarks Act.


The court also stated that even though the name of the song “Akun Tehdas” did not meet the requirements of the Copyright Act to be protected as a literary work, it nonetheless was protectable as a name of a protectable musical work invoking Article 51 of the Copyrights Act prohibiting e.g. use of a name that would cause a work to be confused with an earlier published work or its author. Also, as the trade name was a name of a protectable work, it should have been revoked under applicable Article 10.3 of the Act on Trade Names.


The court, however, went on to find that AKUN TEHDAS could not be said to have become established for equipment rental services before the registration of ATO’s trade name in 1990. Accordingly, the trade name should not have been revoked invoking the applicable Article 10.4 of the Act on Trade Names. Nonetheless, the symbol had become established since the 1990’s, and accordingly, ETO had prior rights to the trade mark AKUN TEHDAS as compared to ATO, which had not applied for the mark’s registration until 2003.


For more information on the band click here.

Posted by: Mikael Kolehmainen @ 08.00
Tags: copyright, establishment; trade name, finland,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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