The Finnish Market Court Dismissed HKScan's Request for an Injunction against the German Company Hans Freitag 

In its decision (MAO:355/16) of 15 June 2016, the Finnish Market Court set forth standards for trademark infringement and unfair use of competitor's reputation.

In the proceedings, the plaintiff HKScan claimed that their ‘HK’ seal logo was a well-known trademark in Finland, primarily for food supplies and secondarily for meat products. Hans Freitag used a trademark ‘hf’ with a logo, which similarly resembled a seal or quality label, for its bakery products. The plaintiff claimed that such use was to be prohibited either on the basis of trademark infringement or on the basis of the Unfair Business Practices Act (1061/1978) as the product unfairly took advantage of HKScan's reputation and caused it damage. The defendant, Hans Freitag, contested the claim.

The Market Court concluded that even though both companies operate in food industry, Hans Freitag produces bakery products and HKScan produces mostly meat products. The presented evidence did not establish that the "HK" seal logo – although as such recognized as a well-known trademark – would be a well-known trademark for all food supplies. Furthermore, as the logos in question differed to some extent ("HK" used capital letters, while "hf" used small letters; also colors of the trademarks differed), the Court concluded that the trademarks are similar only to a lesser degree and no trademark infringement can be considered to exist. On said basis, no violation of good business practices under the Unfair Business Practices Act was found to take place either. The decision is not final.

Svea Court of Appeal Rules on Trademark Infringement and Stops Mars from Selling m&m's in Sweden

In its decision of 2 June 2016 (T 5406-15), Svea Court of Appeal ruled that Mars Sverige AB, by selling their popular chocolate covered peanuts under the trademarks 'm' and 'm&m', was infringing Kraft Foods Sverige Intellectual Property AB's unregistered trademark 'm'. The decision was the final bout in a dispute which the parties have been involved in for several years.

In an earlier dispute between the parties, which also ended up in Svea Court of Appeal, Kraft's old trademark registration 'm' was invalidated due to an insufficient use. However, in that same judgement, Svea Court of Appeal found that Kraft had an unregistered right to the trademark 'm'.

In the second round currently in question, the Court was requested to decide whether Mars' use of 'm' and 'm&m' constituted a likelihood of confusion and thus infringed Kraft's unregistered trademark. Although Svea Court of Appeal refused to acknowledge the relevance of two market surveys, which Kraft had invoked in the previous case to establish the existence of an unregistered right, the Court ultimately found that Kraft did have an unregistered right to the trademark 'm'. The Court ruled that Mars' use of the single 'm' on each piece of candy and the general use of 'm&m' constituted a clear likelihood of confusion as the products were identical in nature. However, the Court ruled that the use of 'M&M' (i.e. capital letters) did not cause a likelihood of confusion, thus reversing the ruling of the lower Court on this point.

The Finnish Supreme Administrative Court Concludes that Appearance of a Product Can Become Distinguishable through Use

On 6 June 2016, the Supreme Administrative Court rendered a judgment (2519/2016) in a case between Oy Halva Ab (“Halva”) and the Finnish Patent and Registration Office (“PRH”) relating to the interpretation of the criterion of distinctive character of a trademark under Section 13 of the Trademark Act. The Court concluded that when assessing distinctive character of a trademark, the length of time and the extent to which the mark has been used should be carefully assessed in addition to its appearance.

Halva had in late 2011 applied for a trademark registration for the appearance of its product that resembled a "licorice mat" (consisting of three layers of licorice sheets, each consisting of eight adjacent licorice tubes). The product had been in Halva's product portfolio and use since 1951. PRH rejected the application on the basis that the appearance of the product was not sufficiently distinctive. Halva's subsequent appeal was first handled by the Market Court that rejected the appeal on similar basis, also emphasizing that Halva had not established that average consumers would on the basis of the appearance of Halva's product distinguish it from other similar products.

In its decision, the Supreme Administrative Court emphasized that the assessment of distinctiveness is conducted not only based on appearance of the product but also on the basis of an average consumer's association of the origin of the product based on its appearance. Based on the results of a market research Halva had submitted during the appellate proceedings, the Court concluded that the appearance of Halva's product had – despite its ordinary appearance – become distinctive among consumers. The trademark was thus eligible for registration under Section 13 of the Trademark Act and the matter was referred back to the PRH for registration purposes.

The Finnish Market Court Ruled that Trademark "HANGOVER" Is Descriptive for Pizzas

In the two judgments (MAO:375/16 and MAO:376/16) of 17 June 2016, the Finnish Market Court assessed the distinctive nature and infringement of trademark "HANGOVER". The decisions were rendered in proceedings between four members of Pizza Express chain, Franchise Pizza Ciray Ketju Oy, PE Tikkurila Oy, Tikkurilan Express Ay and C and CPR Conseptor Oy, which has community trademark no 01227473 "HANGOVER" for class 30 "pizzas".

In the first judgment, the plaintiffs, which are a part of the Pizza Express chain, claimed primarily that the trademark should be declared invalid because it is devoid of any distinctive character, is descriptive and has become customary. Secondarily, the application for the trade mark should be considered as filed in bad faith and in any event, the trade mark had become common name. The Market Court found that the relevant public consisting of Finnish average consumers know that pizza functions as typical hangover food and the English word "hangover" refers to use of pizza as hangover food. Therefore, the mark describes the characteristics of the registered goods and has lacked distinctive character at the date of registration. The Market Court declared the mark invalid.

In the second decision, CPR Conseptor claimed that the Pizza Express companies had infringed its community trademark and generally known trademark "HANGOVER" by using signs "Hangover" and "Express Hangover" as names for pizzas and that the Court should prohibit them from continuing it. The Court had already declared the mark invalid by its earlier decision. Further, it found that CPR Conseptor had not made the sign "HANGOVER" generally known for the company's products among the consumers or businesses in question. On said grounds, the Court held that the defendants had not infringed CPR Conseptor's trademark rights and dismissed the case. The decisions are not final.

Regulation (EU) No 609/2013 of the European Parliament and of the Council

Regulation No 609/2013 on food intended for infants and young children, food for special medical purposes, and total diet replacement for weight control is applied in the EU as of 20 July 2016. The regulation repeals Council Directive 92/52/EEC, Commission Directives 96/8/EC, 1999/21/EC, 2006/125/EC and 2006/141/EC, Directive 2009/39/EC of the European Parliament and of the Council and Commission Regulations (EC) No 41/2009 and (EC) No 953/2009.

The regulation aims to clarify labelling, consistency and marketing of food intended for special groups. Among such food are e.g. food intended for athletes, gluten-free and low-gluten products, lactose-free and low-lactose products, total diet replacements and milk-based drinks for small children.

Contrary to the legislation applied before the entry into force of the regulation in July 2016, the aforementioned products are no longer considered to be products falling under the legislation regarding special diet products. Instead, the sale and marketing of gluten-free, lactose-free and other aforementioned products must comply with general food statutes.

Furthermore, no obligation to make a notification to the Finnish Food Safety Authority (Evira) of such products exists anymore. However, vitamins and minerals which are added to such products should be notified similarly as when supplementing regular food.

In Brief

CJEU Found that Individual Small Portions of Honey Are Subject to the Obligation to Indicate the Country of Origin

In its judgment C-113/15 of 22 September 2016 (Breitsamer und Ulrich GmbH & Co. KG v. Landeshauptstadt München, intervening party: Landesanwaltschaft Bayern), the Court of Justice of the European Union (CJEU) assessed the concept of "pre-packaged foodstuff" in context of Directive on the approximation of the laws of the Member states relating to the labeling, presentation and advertising of foodstuffs (EC 2000/13). The case related to individual portions of honey Breitsamer und Ulrich GmbH & Co. KG supplied to mass caterers that sold the portions separately or offered them as part of pre-prepared meals for an all-inclusive price. In its ruling, the CJEU concluded that the obligation to identify country of origin also concerned such products.

CJEU: The Labelling Obligation of Poultry Meat does not Restrict Freedom to Conduct Business

In its judgment C-134/15 of 30 June 2016 (Lidl GmbH & Co. KG and Land of Saxony, Germany), the Court of Justice of the European Union (CJEU) assessed the validity of Article 5(4)(b) of Commission Regulation 543/2008, which provides for obligation, on the retail sale of pre-packaged poultry meat, to indicate the total price and the price per weight unit on the pre-packaging or on a label attached thereto. According to the local Agriculture Authority involved in the proceedings, Lidl, whose price labelling practice showing the product prices only on labels attached to the shelves was claimed to infringe said regulation, claimed that the provisions were invalid as they constituted a disproportionate interference with freedom to conduct business. The CJEU found that the interference with freedom to conduct business was yet proportionate to the objectives pursued.