The Supreme Administrative Court of Finland issued on 13 August 2012 long-awaited decisions in so called “smiley” cases. The key issue in both of the cases was an attempt to register smileys : ) and :-) as trademarks. The applications were filed on 27 October 2005 by a private person, a law student actually, and the applications covered class heading wordings in classes 9, 35 and 38. The said means all the goods and services in these classes according to the trademark practice of Finland. The Office of Finland regarded the marks as distinctive registering them on 31 May 2006. The number of oppositions, namely 20, filed against the registrations during the publication period was very exceptional and is probably a Finnish record in our trademark history. Oppositions were filed both on relative and absolute grounds depending on the opponent and its interests.

All oppositions were rejected by the Office on 1 March 2007, and six appeals were filed with the Board of Appeal. Four of them were filed on absolute grounds and two on relative grounds. Benjon represented the Association of Finnish Advertisers and the Federation of the Finnish Media Industry basing the appeals on non-distinctiveness of the marks :) and :-).  The Board of Appeal rejected all appeals regarding the marks as registrable. All the opponents appealed to the Supreme Administrative Court.

Appeals filed on absolute grounds were accepted by the Supreme Administrative Court. the Supreme Administrative Court considered the marks as non-distinctive not meeting the criterions of section 13 of the Trademarks Act of Finland taking also into account Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trademarks and Finnish and EU case law. According to section 13 of the Trademarks Act, to be eligible for registration, a trademark must be capable of distinguishing its proprietor's goods from those of others. A mark that denotes either alone or with only few alterations or additions, the kind, quality, quantity, use, price or place or time of manufacture of the goods shall not, as such, be regarded as distinctive. In assessing whether a trademark possesses distinguishing power, all the factual circumstances shall be borne in mind, particularly the length of time and extent to which the mark has been used.

According to the Supreme Administrative Court, smileys :) and :-) are images describing emotional features without having any directly equivalent words in Finnish language. Smileys are, however, widely known and positive messages they communicate are clearly understandable. Although no direct translations exist the Supreme Administrative Court was of the opinion that smileys can be regarded as descriptive symbols like ordinary words in Finnish language. All smileys have to be available for all traders and cannot, therefore, be registered as trademarks. The said applies particularly in electronic communication and classes 9, 35 and 38, the classes of the applications in the present cases.