Intellectual Property

The Finnish Market Court invalidated EU-trademarks filed in bad faith 

In its judgement MAO:130/17 of 10 March 2017, the Finnish Market Court ruled that Lindström Oy had filed the applications for the EU trademarks RUSANEN (word) and RUSANEN (figurative) in bad faith, since Lindström Oy should have been aware of the usage of “Rusanen” by Rusanen Microclean Oy and Tefismart Oy. The Market Court also considered that Lindström Oy did not actively use or intend to use the trademarks in its business operations, which supported the notion of the applications having been filed in bad faith.

Lindström Oy had acquired the company Rusanen Tekstiilipalvelut Oy and through that the right to use "Rusanen" as an auxiliary trade name in 2011. Rusanen Microclean Oy and Tefismart Oy have used "Rusanen" since 2007. Lindström Oy filed applications for the EU-trademarks RUSANEN (word) and RUSANEN (figurative) in January 2014, which were granted 11 July 2014. Lindström Oy and Rusanen Microclean Oy, and its subsidiary Tefismart Oy, are competitors in the textile and textile cleaning industry.

In its decision the Market Court interpreted the Community Trademark Regulation (207/2009) and cases C-529/07 Chocoladenfabriken Lindt & Sprüngli and C-320/12 Malaysia Dairy Industries. Pursuant to Article 52 of the Community Trademark Regulation, it is considered bad faith, and thus an absolute ground for invalidity, if a) the applicant knew or should have known that the mark, or a similar mark, was used by another actor in the EU for similar products and b) the applicant's subjective intentions and other factors support, as a whole, this interpretation.

The Market Court considered it proven that Lindström Oy was aware that Rusanen Microclean Oy and Tefismart Oy were using the mark prior to filing the EU trademark applications. The Court ruled that it was not proven that Lindström Oy had actively used or intended to use "RUSANEN" as a trademark in its business operations, and that their intentions had mainly been to prevent their competitors from using it. On these grounds, the court ruled that Lindström Oy had filed the EU trademark applications in bad faith and, consequently, that the EU trademarks were invalid. The decision is not yet final.

Two CJEU Rulings on the Interpretation of the Information Society Directive 

In March 2017 the Court of Justice of the European Union ("CJEU") gave two preliminary rulings of the interpretation of the Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (hereinafter "Information Society Directive" or "Directive"). The case C-138/16 AKM v. Zü concerned the interpretation of the right of communication of works to the public in light of exceptions and limitations provided by Article 5 of the Information Society Directive, and the case C-275/15 ITV Broadcasting and Ohers concerned the interpretation of the concept of 'access to cable of broadcasting services' pursuant to Article 9 of the Information Society Directive.

In AKM v. Zü the CJEU ruled, in line with its earlier case law, that the transmission of programs broadcasting does not constitute communication to the public if there is no new public, meaning such public which the author did not take into consideration when originally authorizing the use of his work. This is the case even though the technical means of communication used by the broadcasting corporation were different from the original means of communication. Furthermore, the CJEU ruled that the Directive precludes such national legislation that allows broadcast without the author's consent to a limited amount of subscribers, stating that such legislation did not constitute 'use in certain other cases of minor importance' within the meaning of Article 5(3) of the Information Society Directive. Thus, such legislation did not fall within the scope of exceptions and limitations of the author's right of communication to the public provided in the Directive and which should be interpreted restrictively. 

In ITV Broadcasting and Ohers the CJEU stated that the list of exceptions and limitations to the author's right of communication to the public is exhaustive, and retransmission via internet through streaming does not constitute an exception pursuant to Article 5 of the Information Society Directive, and thus the concept of 'access to cable of broadcasting services' under Article 9 cannot be interpreted as allowing retransmissions without the author's consent. 

Finnish Market Court Evaluates Its Jurisdiction to Evaluate Certain Copyright Cases 

The Finnish Market Court has in two recent cases evaluated its jurisdiction in relation to matters connected to copyright legislation.

In the case MAO:155/17 from 24 March 2017 Warner Music Finland Oy demanded the Market Court to confirm that it has the right to use music in certain listed karaoke products, audio records entailing the said music as well as the lyrics entailed in the mentioned karaoke products without the permission from or liability to compensate to, as specified in the Copyright Act, its co-operation partner Porski Oy. Warner Music Finland Oy and Porski Oy had co-operated concerning the mentioned karaoke products since the year 1991 and according to Warner Music Finland Oy there had been no agreement particularly on the subject matter.

Warner Music Finland Oy defined its claim to consider only the permission from Porski Oy and the liability to compensate as stipulated in the Copyright Act. There was however no claim regarding any consequences deriving from the Copyright Act nor had there been any claim that the provisions of the Copyright Act would have been infringed. The Finnish Market Court does not have jurisdiction to try purely contractual matters. Thus, to decide whether the Market Court could try the case, it had to evaluate if there had been an agreement between the parties on the matters included in the claims by Warner Music Finland Oy. 

The Market Court noted that the parties had not agreed on the copyrights or related rights nor their transfer in the co-operation agreement between them. It was also not evident from the statements from the witnesses that the mentioned rights would have been agreed upon – despite the fact that the mentioned evidence indicates that there might have been some mutual understanding between the parties on that at least some of the rights might have been shared. Based on the evidence presented to it, the Market Court decided that is the matter was a copyright dispute (specified in Section 61 § of the Finnish Copyright Act) falling within the jurisdiction of the Market Court as provided by the Market Court Proceedings Act. 

In the case MAO:149/17, also from 24 March 2017, the plaintiff, the Copyright Association for Audiovisual Producers Tuotos ry, demanded the Market Court to confirm that a certain percentage of the shared and commonly administered funds of the contractual license organizations accumulated from the online recording services belong to the plaintiff. The plaintiff claimed that the action was based on the Finnish Copyright Act. 

The Market Court evaluated the relevant sections of the Copyright Act regarding compensation for the use as well as on dispute resolution and concluded that the matter at hand did not concern any of them. The Market Court further stated that the Copyright Act does not stipulate on the amount of use compensations, their division or distribution between right holders nor the settlement of disputes under the circumstances under evaluation. Thus, the Market Court considered the division of the funds under discussion to be a purely contractual matter and dismissed the case due to lack of jurisdiction.

Marketing & Consumer

The CJEU Ruled about Fulfilling the Obligation to Provide Trader's Identity and Contact Information in Print and Online Advertising

The Court of Justice of the European ("CJEU") ruled in its decision in case C–146/16 Verband Sozialer Wettbewerb eV v. DHL Paket GmbH on the interpretation of Unfair Commercial Practices Directive's (2005/29/EC) obligation to provide the traders identity and geographical address in an "invitation to purchase", e.g. advertising. The CJEU concluded that the information can be provided on a linked website instead of a space-restricted print advertisement.

DHL Paket, who operates an online sales platform on which traders offer products for sale, published a newspaper advertisement that invited potential clients to visit the platform's website where the marketed products could be found using displayed product codes. The information of the traders selling the products on DHL Paket's platform was not displayed in the print advertisement but on the website only. 

Verband Sozialer Wettbewerb, an association of electronic product suppliers, claimed that DHL Paket failed to provide the traders' information in its advertisement. The German Federal Court of Justice eventually referred the case to the CJEU asking whether it was sufficient to provide the trader information on the website only, and whether it mattered that DHL Paket advertised products sold on its online platform by others, not the company itself.

The CJEU stated that the advertising medium and trader's efforts to make the information available should be taken into account when deciding whether the trader has sufficiently provided its identity and address. The Court considered that when advertising an online platform offering products from many different traders the print advertisement may be too space-restricted, and it could be sufficient to provide the information on a separate website as long as it is provided simply and quickly. In addition, the Court noted that the information obligation applies also when advertising products sold by others than the advertiser itself.

In Brief

Finnish Market Court Grants Interim Measure Related to Comparative Advertising 

In its decision MAO:117/17, dated 3 March 2017, Finnish Market Court granted an interim measure against TeliaSonera Finland Oyj's comparative advertising expressions such as "proven to be the fastest mobile network in Finland". TeliaSonera had based its use of these expressions on results from Ookla's Speedtest service. According to the counterparty, Elisa Oyj, the results from the service were not reliable and the use of the expressions should be prohibited on the basis of the Unfair Business Practices Act (FI: laki sopimattomasta menettelystä elinkeinotoiminnassa). The Market Court found that Elisa had given sufficient reasoning to support its claims that TeliaSonera's marketing expressions would be prohibited by the Market Court's final judgement. The court also stated that TeliaSonera's actions might continue and cause damage to Elisa. Thus, the Market Court temporarily prohibited TeliaSonera from using expressions that claim that its mobile network is the fastest in Finland.

The Finnish Supreme Administrative Court Rules on Archiving of Sensitive Data 

The Finnish Supreme Administrative Court (the "Court") gave a decision KHO:2017:34 of 7 March 2017, in which the Court ruled that there were legal grounds for archiving military aptitude test results regardless of the fact that those files contained sensitive data in the meaning of section 11 of the Personal Data Act (22.4.1999/523). The Court held that the test results in question had a great value as research material, and thus there were legitimate reasons for their archiving. Since the obligation to erase personal data under Personal Data Act only concerns erasing the data from actively used registers, it is permissible to permanently archive such data in accordance with the Archives Act.