On 17 February 2022, the Finnish Market Court held that a word trademark of Lidl Stiftung & Co KG – TUKKIJÄTKÄ ("lumberjack" in English) (No. 266777) – had to be revoked.(1) The Court held that, by using the mark, Lidl was seeking to take unfair advantage of the reputation of the earlier well-known KOSKENLASKIJA marks, which had been registered by Valio Oy for cheeses (the term "koskenlaskija" refers to someone who is rafting). The Court stated that the registration of the TUKKIJÄTKÄ trademark sought to make the target audience establish a link between the KOSKENLASKIJA and TUKKIJÄTKÄ marks.
Link between marks is required for protection of well-known marks
The Court held that even if the words "koskenlaskija" and "tukkijätkä" differ from each other and the marks are phonetically and visually different, a link between these marks, especially with respect to their meaning, is required for the protection of a well-known trademark. According to the Court, the evidence presented in the case demonstrated that the target audience made a connection between the TUKKIJÄTKÄ and KOSKENLASKIJA marks.
When assessing the link between the marks, the Court considered:
- the degree of similarity in the meaning of the words "tukkijätkä" and "koskenlaskija";
- the similarity of goods (ie, cheeses) covered by the marks;
- the strong distinctiveness of Valio's KOSKENLASKIJA marks;
- the reputation of the KOSKENLASKIJA marks as a symbol of processed cheese; and
- the evidence presented by Valio regarding the association between the marks by average consumers in Finland.
The Court held that the TUKKIJÄTKÄ mark had to be regarded as weakly similar in meaning to the KOSKENLASKIJA word marks. The Court, however, found that the Finnish figurative marks in connection with the brand of Koskenlaskija by Valio (No. 257836 and No. 258425; Figures 1 and 2) were very similar in meaning to the TUKKIJÄTKÄ trademark. The Court stated that when an average Finnish consumer saw a picture of a man rafting with logs, the consumer would think that he was a lumberjack ("tukkijätkä" in Finnish).
Figure 1: No. 257836
Figure 2: No. 258425
Considering the present judgment regarding the TUKKIJÄTKÄ trademark, along with a judgment earlier this year by the Finnish Market Court concerning the registration of the V-WHEELS mark,(2) it can be concluded that similarity based solely on meaning may be sufficient to demonstrate a link between a well-known mark and a later mark.
Taking unfair advantage of reputation
Taking unfair advantage of the distinctive character or reputation of an earlier trademark (known as "parasitism" or "free-riding") is related to the benefit that a third-party gains by exploiting the mark. This concept also applies when the association evoked by the well-known trademark, or the characteristics it reflects, are transferred to goods with a similar later mark, resulting from the exploitation of a well-known mark and its reputation. In the TUKKIJÄTKÄ case, the Court also noted a preliminary ruling of the Finnish Supreme Court,(3) according to which consideration can be given to the factors that appear in the marketing of the later mark when assessing the intention to take unfair advantage of the earlier mark's reputation.
The Court stated in its judgment that an analysis of the actual commercial use of Tukkijätkä as a brand showed that Tukkijätkä cheese had been sold in packaging that had a similar appearance and colouring to the packaging of Koskenlaskija cheese. The appearance of the product and the slogan, "Tukkijätkä cheese has a character like the foaming rapids", which was used in the packaging, indicated that Lidl sought to take unfair advantage of the widespread reputation of Koskenlaskija cheeses.
Moreover, the Court stated that as the word marks TUKKIJÄTKÄ and KOSKENLASKIJA, and the pictures in Valio's figurative trademarks, which displayed a person rafting, did not refer to cheese products, it had to be understood that Lidl's purpose in its registration application was for consumers to connect Tukkijätkä cheese to Koskenlaskija cheese. The Court found that Lidl sought to take unfair advantage of the reputation of the well-known KOSKENLASKIJA marks, so the registration of the TUKKIJÄTKÄ trademark had to be revoked.
The case concerning the TUKKIJÄTKÄ trademark represents a much-needed and substantial improvement to the protection of well-known marks against unfair imitation and the exploitation of reputation in Finland. The judgment gives additional certainty to holders of well-known marks and incentivises them to build their brands with the understanding that, where appropriate, the imitation of distinctive marks and association with a well-known brand may be prevented, even if there is no traditional likelihood of confusion between the marks. Instead, a mere association and link between the marks may suffice to establish infringement.
The Court determined that, consistent with the EU case law, a likelihood of confusion is not required when it comes to a well-known mark. A mere similarity of the meaning between the marks may, in certain cases, be sufficient for the target audience to form a link between the marks, in which case a later mark may gain unfair advantage from the reputation of a well-known earlier mark and from the image created by the well-known brand.
An appeal was lodged against the decision and thus it remains to be seen whether the Supreme Administrative Court of Finland will take the decision into consideration.
For further information on this topic please contact Milla Lehtoranta at Berggren Oy by telephone (+358 10 227 2000) or email ([email protected]). The Berggren Oy website can be accessed at www.berggren.eu/en/.
Endnotes