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Recent Deals / 26.01.2021

Waselius & Wist successfully represented a German company and its Finnish subsidiary in the automotive industry in a trademark and auxiliary trade name dispute in the Market Court.

A Finnish company filed a lawsuit on infringement of its auxiliary trade name and trademark against our client. Our client filed a counterclaim and requested annulment of the claimant’s auxiliary trade name and invalidation of its trademark registration. The auxiliary trade name was annulled, and the trademark invalidated, but on different grounds despite being practically identical. The auxiliary trade name was annulled due to non-use and the trademark invalidated due to lack of distinctiveness. Since the claimant lost its exclusive rights, the infringement claim was dismissed.

The Market Court concluded that the auxiliary trade name, although consisting of solely descriptive parts, still had a capacity of identifying the business. The trademark, on the other hand, was considered to lack inherent distinctiveness for the products and services in question and the claimant had not showed that the trademark would have gained distinctiveness through use. Consequently, the trademark was invalidated.

The Market Court further assessed whether the use of the auxiliary trade name in a form where the top level domain “.fi” was added would constitute use of the auxiliary trade name in its registered form. The Court referred to the corresponding provision in the Trademark Act implementing the Trademark Directive. Under said provision, the form in which a trademark is used may differ from the form in which that trademark was registered only in elements which do not alter the distinctive character of the mark. The Court further referred to relevant EJC jurisprudence, according to which the proprietor of the mark is allowed, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. Referring to the different functions of a trade name compared to a trademark and to a smaller need for making changes to a trade name, the Market Court concluded that said principles are not applicable to trade names. Adding a word, a separate part or a top level domain to a trade name is not such a small change that would be allowed under the Trade Name Act. As the auxiliary trade name had been used only with the top-level domain “.fi”, it was annulled due to non-use without a justifiable reason.

The Market Court judgement emphasizes the different functions of trademarks and trade names. These affect the requirements for distinctiveness on the one hand and the scope of protection and room for adaptation on the other hand, which companies need to be aware of in order to properly plan the protection and use of their exclusive rights.

Lawyers involved:

Åsa Krook
Mira Hänninen