NETTIKARAVAANI v netticaravan: is there room for both in Finland?

In June 2007 the Finnish Trade Mark Office registered the trade mark NETTIKARAVAANI (registration number 239766), on the application of NettiX Oy, for goods and services in Classes 9, 35 and 37. In the Finnish language the word “netti” is an abbreviation for the internet and “karavaani” means caravan.

In October 2008 the Finnish Trade Mark Office rejected the challenge which Ilta Sanomat Oy (later renamed Sanoma News Oy) had made against the registration. Ilta Sanomat Oy stated that its mark netticaravan had been established through use in Finland. The office based its decision first on the fact that the proof which llta Sanomat Oy had submitted of the use of the mark netticaravan (for example, use as a domain name) did not sufficiently prove that the mark had been established through use in Finland. In addition, Ilta Sanomat Oy argued and was able to prove to the office that Netti X Oy had known of the use of netticaravan mark at the moment it applied for registration and it had not proved that it would have used the mark NETTIKARAVAANI before the opponent had started to use its mark netticaravan. However, based on the submitted material, there was insufficient proof that the mark netticaravan would have been used as a trade mark for the goods and services in Classes 9, 35 and 37. Thus the Trade Mark Office found that there was no point in taking note of the opposing party’s claim that NettiX Oy acted in bad faith at the moment of registration.

The Board of Appeal of the Finnish Trade Mark Office rejected Sanoma News Oy’s appeal and stated that there were no grounds for revoking the trade mark NETTIKARAVAANI as the prerequisites of the Sections 6 and 14 of the Trade Marks Act were not fulfilled.

The Supreme Administrative Court of Finland rejected the appeal of Sanoma News Oy and retained the decision of the Board of Appeal of the Finnish Trade Mark Office. The use of netticaravan was in the field of IT applications, marketing, remote communications services relating to the internet and vehicular travel and, according to the company itself, also in relation to company management, company administration and editorial functions. However, the evidence provided did not prove that the mark would have been established through use.

The Supreme Administrative Court stated that, unlike the Board of Appeal, viewed mark as has been used in a trade mark-like manner before the NETTIKARAVAANI mark was applied for. The applicant did not provide sufficient proof of the NETTIKARAVAANI mark that would have taken place prior to when the use of started even though it belonged to a series of trade marks of the applicant starting with the word “NETTI”. Based on the above, the Court stated that the matter should be decided under Section 14(1)(7) of the Trade Marks Act according to which a mark shall not be registered if it is liable to be confused with a trade symbol being used by another party for his goods at the time of the application, and if the applicant was aware of that use at the time of his application and had not used his own mark before the other trade symbol came into use.

The Court held that there was a strong connection between the marks. However, was so descriptive that the protection it would have established through use was very narrow. The same applied to NETTIKARAVAANI, which had been registered despite the fact that it was not very distinctive in relation to the goods and services for which it was registered.  On this basis the use of did not prohibit the registration of the trade mark NETTIKARAVAANI.

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)

Posted by: Blog Administrator @ 02.03
Tags: Finland, registration, proof of use,
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