On 2 April 2019, the Market Court of Finland issued a decision in a trade mark opposition case between H-D U.S.A., LLC and PK Product Oy regarding the trade mark H-DFI in Finland (MAO:153/19). Suvi Haavisto summarises the case for Class 46.

Background

A Finnish company PK Product Oy (the applicant) had registered the word mark H-DFI in Finland for the following services in class 38: "Internet-based telecommunications services; Telecommunication by email; Telecommunication services provided via the Internet, intranet and extranet."

The registration was opposed by an American company H-D U.S.A., LLC (the opponent), famous for its Harley-Davidson brand, on the basis of four prior EUTM registrations for the marks H-D and HD.

Previously, the applicant had been a retailer of Harley-Davidson products in Finland and registered the domain name h-d.fi. When the co-operation ended, the parties had a dispute concerning the ownership of the domain name. According to the applicant, the trade mark H-DFI was registered to support the domain name, which remained with the applicant.

The opponent's prior registrations did not cover the same class, and the Finnish Patent and Registration Office (PRH) found that there was no likelihood of confusion or other grounds for refusal. The opposition was rejected and the opponent filed an appeal with the Market Court.

Market Court judgment

The Market Court noted that the questions in this matter, based on the opponent's claims, concerned whether there exists a likelihood of confusion between the marks, whether the opponent's prior marks were considered well-known and whether the trade mark H-DFI should be refused as being filed in bad faith.

First, the Market Court noted that the registrations cover different classes and stated that the fact that the goods and services of the opponent may be offered and marketed over the Internet does not mean that they are complementary to each other. The trade mark H-DFI does not even cover advertising and marketing services. Due to the dissimilarity of the goods and services, the Market Court concluded that there was no likelihood of confusion between the marks.

The opponent also claimed that its prior EU trade marks are well known in Finland. In support of its claim, the opponent provided testimonies signed by persons with experience in the import or resale of Harley-Davidson products in Finland. The Market Court noted that whether the mark Harley-Davidson is well known in Finland has no independent relevance when assessing the recognition of the H-D or HD marks. The opponent's marks were not proved to enjoy the protection of a well-known trade mark in Finland.

When assessing the bad faith, relevant factors include that the applicant knew or must have known that a third party is using an identical or similar mark for an identical or similar product, the applicant’s intention to prevent that third party from continuing to use such a mark, and the degree of legal protection enjoyed by the marks. The Market Court acknowledged that the applicant knew that the opponent was using the marks H-D and HD. However, the goods and services were dissimilar and the applicant did not intend to prevent the opponent from using its mark. The mark had been registered to support the existence of the domain name h-d.fi. The court considered that the mark was not filed in bad faith.

Consequently, the Market Court rejected the appeal. The decision can be found here (in Finnish). However, the decision is not final, as an appeal has been filed with the Supreme Court of Finland.

Suvi Haavisto is an attorney-at-law with Roschier in Helsinki