Number 365 held to be descriptive in relation to tyres

Finland

The Market Court of Finland has issued a decision regarding the distinctiveness of the mark RENGAS365 (Case 83/2014).

Swedish company Däck365 Ab (Swedish for 'Tyre365') applied for the registration of the Finnish word combination 'Rengas365' (meaning 'Tyre365') to be registered in Classes 12, 17 and 37 of the Nice Classification. The company owned earlier trademark registrations for a similar word combination, 'Däck365', in Sweden and Denmark.

The Finnish Trademark Office noted that there was an intention to harmonise the legislation in the European Union to increase predictability. Nevertheless, the Trademark Office held that it was not bound by the earlier registrations in Sweden and Denmark.

According to the office, the mark applied for was composed of the word 'rengas' ('tyre') and the number 365. Such combination of a word and a number was not commonly used in the Finnish language. The Trademark Office argued that the word combination 'Rengas365' referred directly to tyres, which “can be used all year round”. On this basis, the Trademark Office stated that the mark applied for lacked distinctiveness and, therefore, it refused to register it.   

Däck365 filed an appeal to the Market Court, arguing that it held earlier registrations in Sweden and Denmark for a similar mark and that, according to the objective of harmonisation in the European Union, the mark should also be registered in Finland.

The Market Court held that, according to the Finnish Trademarks Act, Section 13, in order to be registered a trademark must be capable of distinguishing its proprietor's goods from those of others. A mark that denotes - either on its own or with a few alterations or additions - the kind, quality, quantity, use, price or place or time of manufacture of the goods, shall not, as such, be regarded as distinctive.

The court then stated that the mark applied for was created by combining the word element 'rengas' and the number 365. The word 'rengas' directly described the goods in Class 12 and the purpose of the goods and services in Classes 17 and 37.

Further, the number 365 was universally associated with the number of days in a year. Under these circumstances, when used together with the word 'rengas', the number 365 described the fact that “the goods or services are usable or available all year round”.

The Market Court then considered the applicant's claim concerning harmonisation in the European Union. It stated that similar trademark registrations in other countries can be taken into consideration when judging the distinctiveness of a mark; however, the fact that the mark was registered in other countries did not mean that it had distinctive character in Finland.

Consequently, the Market Court rejected the appeal, concluding that the mark RENGAS365 directly described the goods and services at issue.

Jukka Palm, Berggren Oy Ab, Helsinki

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