Battle over AKUN TEHDAS mark comes to an end

The Supreme Court of Finland has refused leave to appeal in a dispute over the trademark AKUN TEHDAS (April 3 2009).

Eppu Normaali Oy, a company created in 1990 by the members of the famous Finnish band Eppu Normaali (formed in 1976), started proceedings against Akun Tehdas Oy, a business consulting company. Akun Tehdas is the name of one of the band's most famous albums (released in 1980), as well as the name of a building owned by the band from which a number of music-related companies operate. The respondent registered the trade name Akun Tehdas Oy in 1990 and the trademark AKUN TEHDAS in 2003.

The plaintiff requested that:
  • the trade name Akun Tehdas Oy be revoked; and
  • the trademark AKUN TEHDAS be declared invalid.
The plaintiff claimed that it had acquired trademark rights in the term 'Akun Tehdas' through use since the 1980s.

The Helsinki District Court agreed that the plaintiff had a right of action. According to the court, the relevant public associated the trademark AKUN TEHDAS with the plaintiff. The court further held that the trademark had become established in the 1980s and, therefore, the plaintiff had prior rights in the mark. Furthermore, copyright in the Akun Tehdas album belonged to the plaintiff.

The court thus revoked the registration of the trade name Akun Tehdas Oy based on the plaintiff's copyright in the term 'Akun Tehdas'. The court also held that the trademark AKUN TEHDAS was invalid on the grounds that there was a likelihood of confusion with the plaintiff's earlier unregistered trademark AKUN TEHDAS.

The respondent appealed, but the Helsinki Court of Appeal affirmed the district court’s decision for the most part. In particular, the court confirmed that the plaintiff was entitled to refer to facts that predated its incorporation. Although the name of the song "Akun Tehdas" could not be protected as literary work, it was protected under Article 51 of the Copyrights Act (which prohibits the use of a name that may cause confusion with an earlier work or its author). The Court of Appeal stated that since the trade name Akun Tehdas Oy corresponded to the name of a protectable work, it should be revoked under Article 10(3) of the Act on Trade Names. This conclusion is debatable because Article 51 of the Copyrights Act prohibits the use of a confusingly similar name only in relation to a literary or artistic work - the provision does not mention trade names or trademarks.

Surprisingly, the court considered that use of the unregistered mark AKUN TEHDAS by the plaintiff for music-related services was sufficient  to invalidate the respondent's mark for all the goods and services covered (including services in Classes 35, 36, 37 and 41 of the Nice Classification, such as "estate agent services", "construction services" and "sporting activities"). The court concluded that there was a likelihood of confusion between the marks on the part of the relevant public.
The Supreme Court has now refused leave to appeal the decision.

Ville Patja, Berggren Oy Ab, Helsinki

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