Own name defence overrides protection of a well-known mark

In Hamken Oy v Focusmer Oy (Case S 06/2328, January 4 2007), the Helsinki Court of Appeal has upheld a lower court decision which ruled that the word and device mark NG DESIGN TERO PALMROTH used in material advertising shoes does not infringe the well-known PALMROTH trademark registered in Class 25 of the Nice Classification.

The defendant, Focusmer Oy, is owned by Tero Palmroth, who is the son of Pertti Palmroth, a famous shoe designer who runs Hamken Oy and owns several registrations that contain the name Palmroth. According to Hamken, Focusmer's use of the allegedly infringing sign leads the public to believe that there is a business connection between Hamken and Focusmer. Hamken referred to the exceptional fame that the mark PALMROTH enjoys in the Finnish market. Hamken also stressed that Focusmer had acted contrary to honest business practices as its conduct takes unfair advantage of the reputation of Hamken's marks. Hamken further argued that Tero Palmroth had never personally designed shoes and that there was a misleading statement in the company's website claiming that Focusmer has a shoe factory in Partola, near Hamken's shoe factory.

The case found its way to the Helsinki Court of Appeal, which held that there was indeed a misleading statement on Focusmer's website regarding a shoe factory that does not exist. The court, however, held that the lower court had correctly applied the law in finding that the owner of Focusmer could rely on the right to use his own name in advertising material.

The court found that the NG DESIGN TERO PALMROTH sign consists of a trademark (NG) and the name of the designer displayed in smaller letters. According to the court, there was no evidence of actual confusion between the products themselves and it had been proven that Tero Palmroth had been recognized as a shoe designer at least to some extent.

Finally, the court stressed that different forenames were sufficient to distinguish the marks from each other. Accordingly, it dismissed the infringement claim.

The ruling appears to contain highly controversial reasoning because it focuses on the question of whether one mark or product may actually be mistaken for another rather than focusing on whether there is a likelihood of confusion as to the source of the product or whether the public assumes there is a business connection between the two undertakings.

The decision is also at odds with a ruling that the Finnish Supreme Court issued in 1990 in which the court stated that the trademark PALMROTH was so distinctive in the Finnish market that another relative of Pertti Palmroth could not use his own name as a trademark in Finland.

Hamken intends to file an appeal with the Supreme Court claiming procedural errors and incorrect application of the trademark law. It remains to be seen whether the court will clarify in which circumstances an own name defence is to be applied.

Jukka Palm, Berggren Oy Ab, Helsinki