In its decision of 17^th December 2008 the Supreme Administrative Court (SAC) of Finland held that the slogan YRITYKSILLE, JOTKA VAATIVAT ENEMMÄN (translation: ‘for companies, who demand more’) did not lack distinctiveness.

What is really interesting in the decision is the strong reference to the jurisprudence of the European Court of Justice (ECJ) on distinctive character. First, the court refers to ECJ’s decision C-218/01 Henkel KGaA, which reminded us of the need for European criteria on interpreting trade mark laws, i.e. that the requirements for gaining trade mark protection should, as a rule, be the same.

The court also referred to ECJ’s decision C-64/02 P ‘DAS PRINZIP DER BEQUEMLICHKEIT’ where it was held that in assessing distinctiveness the same (not stricter) criteria apply also in relation to slogans as apply in relation to other kinds of trade marks.

Here, the National Board of Patents and Registration (NBPR) had stated that the reason, it held the slogan as lacking distinctive character, was that in its opinion the slogan was not original or inventive enough so that it would create a connection to a particular trader and an association to this trader’s goods and services. The court held this to be a stricter test than what applies in relation to other kinds of trade marks, and accordingly, a test that could not be applied.

Referring once more to ECJ’s decision C-218/01 Henkel KGaA, the court pointed out that, in its assessment of distinctive character, a national Office can take into consideration the fact that a trade mark has already been registered in another Member State. Here the fact that localized versions of the same slogan had already been registered in Sweden and Denmark could therefore be taken into consideration. Even more interestingly, at the end of the judgment, the court returns to this point and states that the NBPR not only should apply the European criteria, but should also pay attention to any earlier decisions made by other Member States’ offices on a given mark that is now applied to be registered for the same goods and services in Finland.