Dairy giant Arla restrained from selling dairy products under ARLA SKYR mark

Finland

In Mjólkursamsalan ehf v Arla Oy (MT No 678/15), the Finnish Market Court has ruled that Arla Oy could not use the mark ARLA SKYR in relation to "dairy products".

The court found that the applicants, Mjólkursamsalan ehf and Skyr Finland, had proved that they had valid registered trademark rights to the word mark SKYR in Class 29 of the Nice Classification. The applicants had also showed that the other conditions for issuing a temporary injunction were met. As it was more likely than not that Arla infringed the applicants’ trademark registration, the court granted a temporary injunction against the defendant and ordered that Arla Skyr products be withdrawn from the Finnish market within seven days. The court also set a €500.000 periodic penalty payment to ensure compliance with the prohibition.        

'Skyr' is an Icelandic cultured dairy product. The applicants market their products as an Icelandic curd-like dairy product that is high in protein. Arla market its product as ‘Icelandic-style yogurt’ high in protein.

The applicants claimed that they owned registered figurative and word marks, and had used the mark SKYR on the Finnish market since 2010. As a result of effective marketing, SKYR has become the most famous trademark for curd products in Finland. In the opinion of the applicants, the get-up of Arla’s product was similar to that used by the applicants.

As it was likely that Arla’s product infringed their trademark rights, the applicants required that the court issue a temporary injunction against Arla’s use of its mark before the start of the main proceedings.

Arla contested all the claims and argued that the application should be rejected. 

According to Arla, 'Skyr' is a non-distinctive generic word expressing the nature and the kind of certain types of fermented dairy products. The figurative trademarks granted no protection over the word 'Skyr'. Therefore, it was very unlikely that the use of 'Skyr' would infringe the figurative trademark registrations. Arla also stressed that opposition proceedings against the registration of the word mark SKYR in Class 29 were pending and that other requirements for a temporary injunction were not fulfilled. 

The court held that, while the arguments relating to the figurative trademarks and acquired distinctiveness on the Finnish market must be rejected as unproven, the applicants had showed that they had valid Finnish registered trademark rights to the word mark SKYR. According to the court, the Finnish Trademark Office had first issued an official action against the registration of that mark. However, following the response filed by the applicants, the office had decided to register SKYR as a word mark in Class 29. As this trademark must be held to be a valid and distinctive registered trademark, the pending opposition proceedings did not imply that the infringement of the applicants' trademarks would be unlikely. 

The court emphasised that the proceedings related to the required temporary injunction were summary proceedings. In these circumstances, it was likely that the abovementioned trademark was being infringed. There was also a risk that Arla's actions would cause economic damage to the applicants, while the temporary injunction would not cause unreasonable damage to Arla. Should the applicants lose the main proceedings, they would have to fully compensate Arla for the damage suffered.

The court ruled that the application should thus be upheld, and prohibited the use, distribution, exportation, marketing and storage of dairy products by Arla under the trademark SKYR. Should the applicants wish to enforce the order, they must pay a security deposit into a bailiff’s account before taking such an action.

The decision may be appealed to the Supreme Court of Finland.

Jukka Palm, Berggren Oy Ab, Helsinki

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