FINLANDIA is distinctive for vodka, court rules

In a case involving the well-known FINLANDIA trademark, the Administrative Court has overturned a decision of the Trademark Office to reject the mark on the grounds that it was geographically misleading (Case 0605-2007/TPI-INDECOPI, April 27 2007).

Finlandia Vodka Worldwide Ltd filed an application to register the mark FINLANDIA in Class 33 of the Nice Classification on April 1 2005. In September 2006 the Trademark Office rejected the application on the grounds that:

• FINLANDIA is descriptive because Finlandia means 'Finland' in Spanish and thus the mark indicates the geographical origin of the vodka, which is one of the products to be distinguished by the mark;
  
  
• Finland is one of the main producers of vodka in the world and Finnish vodka is well known for its quality; and
  
  
• the mark does not include any other element, whether a word or device, that could give it distinctiveness.

On appeal, the Administrative Court overturned the Trademark Office's decision. The court held that it is possible to grant an exclusive right to a geographical name and that the limitations to such possible registration are stipulated in Articles 135(e), (i), (j), (k) and (l) of Andean Community Decision 486 on a Common Industrial Property Regime. The court reasoned that as long as the geographical name is not covered by these limitations, it can constitute a trademark.

The court referred specifically to Article 135(i), holding that signs may not be registered as trademarks when they are liable to create confusion in business circles or the minds of the public, in particular as to the geographical origin, nature, manufacturing methods, characteristics, or qualities of the goods or services concerned. The court opined that there were no reasons to assume that consumers would purchase the products to be distinguished by the FINLANDIA mark in the belief that they come from Finland; rather, consumers would understand the products to originate from a specific company whose products offer particular characteristics such as quality which would make worth their rust and confidence. Accordingly, the court considered that FINLANDIA did not fall under the prohibitions of Article 135(i).

Further, the court stated that Finland is not the only important producer of vodka worldwide and held that there was no likelihood of confusion as to the geographical origin of the products because Peruvian consumers would not see FINLANDIA necessarily as referring to a country were vodka is produced.

Lastly, the court held that FINLANDIA (i) was an arbitrary term to distinguish alcoholic beverages, and (ii) possessed the appropriate level of distinctiveness to indicate a specific business origin.

Gonzalo Ferrero Diez Canseco, Lema Solari & Santiváñez, Lima