K-RAUA v K-RAUTA battle continues

The Supreme Court has issued its decision in the latest instalment of the legal battle between the owners of the trademarks K-RAUA and K-RAUTA.

Finnish company Kesko Oyj filed a cancellation action against the trademark K-RAUA, which is registered for retail services in Class 35 of the Nice Classification and is owned by Estonian company KR Kaubanduse AS. Although Kesko was eventually successful (see "Recognition of K-RAUTA's fame beats K-RAUA off the register - for now"), the dispute did not end there.

KR Kaubanduse is still pursuing an infringement action against Rautakesko, a local subsidiary of Kesko, for past use of the trademark K-RAUTA. The infringement action is based on the registration of the mark K-RAUA for services in Classes 35 and 37. Both companies operate in the same field of business (mainly the retail sale of building and interior materials and tools).

The Supreme Court issued its decision on the matter on October 3 2007 (Case 3-2-1-86-07) and remanded the case to the district court, finding that the law had been applied incorrectly and that procedural rules had been violated.

At issue was whether the registration of K-RAUA for 'business administration, import-export and construction services' in Classes 35 and 37 could serve as a basis for the claim that Rautakesko's use of the mark K-RAUTA infringed KR Kaubanduse's rights in the trademark K-RAUA.

The court ordered that the district court review the case to establish whether there is a likelihood of confusion between the marks. For these purposes, the district court must determine whether the services covered by the K-RAUA mark are similar to the retail sale of building and interior materials and tools.

The Supreme Court pointed out that, in line with decisions by the European Court of Justice, the following elements should be taken into account when evaluating the similarity of the services:

• the nature of the services;
  
  
• the relevant consumers;
  
  
• the way in which the services are used;
  
  
• the associations arising from the use of the marks;
  
  
• the degree of similarity of the services; and
  
  
• whether the services are interchangeable or complementary.

The court emphasized that only one of the abovementioned factors may suffice to establish similarity if it is sufficiently dominant.

Almar Sehver, AAA legal Services, Tallinn