Market Court favours more lenient approach to marks with geographical connotations


The Market Court of Finland has overturned the Finnish Trademark Office’s refusal to register a trademark on the ground that it was geographically misleading (MAO:526/13, December 18 2013). The court acted as an appellate instance in the registration proceedings concerning the mark SAINT TROPEZ.

The appellant sought to register a sign consisting of the stylised words 'Saint Tropez' as a trademark for various items of clothing and accessories (eg, bags, umbrellas and wallets) in Classes 18 and 25 of the Nice Classification, as well as retail services for those goods in Class 35. The mark was based on an international trademark registration, in which Finland had been designated under the Madrid Protocol.

The appellant’s company name, Saint Tropez AF 1993 A/S, featured the two-word expression 'Saint Tropez'. Saint-Tropez is beach resort on the French Riviera; the appellant was, however, domiciled in Denmark and not in France. This discrepancy was the core of the issue in the registration proceedings.

The Trademark Office held that SAINT TROPEZ was liable to mislead consumers into believing that the relevant goods and services, as well as the owner of the mark, originated from France. The refusal reflected the strict practice established by the office with regard to trademarks that convey a geographical connotation.

The appellant nevertheless challenged the office’s decision, pointing out, among other things, that the Office for Harmonisation in the Internal Market had allowed the registration of several marks containing the name Saint-Tropez. In those cases, neither the owner of the mark nor the goods or services originated from France. Further, the appellant argued that Saint-Tropez is known specifically as a beach resort, not as a place of industry; this made it less likely that the public would perceive the SAINT TROPEZ mark as an indication of geographical origin.

In its ruling, the Market Court did not engage in lengthy considerations as to whether the town of Saint-Tropez is known to the Finnish public. In fact, it simply - and rather laconically - stated that Saint-Tropez was known to the Finnish public at least to some degree. However, the court did not consider this to be a decisive factor; instead, it found that the mark, used in connection with the goods and services at issue, would not be perceived as an indication of geographical origin. Therefore, registration of the mark could not be refused on the ground that it was geographical misleading solely because the trademark owner happened to be a Danish company.

As a result, the Market Court overturned the office's decision and remitted the case back to it. The mark has now been registered.

Jukka Palm, Berggren Oy Ab, Helsinki

Unlock unlimited access to all WTR content