Relevance of ECJ's Montex decision discussed by Helsinki court

In adidas International Marketing BV v Intermar Simanto Nahmias (Case L06/460, March 6 2007), the District Court of Helsinki has held that the defendant's figurative mark JUMP was confusingly similar with the plaintiffs' well-known three-stripe figurative mark.

In December 2005 Finnish Customs seized a shipment of about 8,000 sports shoes bearing the JUMP mark on their way from China to the Russian Federation. The defendant, Intermar Simanto Nahmias, contested the seizure in Finland by arguing that (i) its device mark was not confusingly similar to adidas's three-stripe mark, and (ii) its mark is registered as a Community trademark. It also stated that the goods were not meant to be sold on the Finnish market but in the Russian Federation.

Furthermore, Intermar referred to the European Court of Justice's (ECJ) ruling in the case of Montex Holdings Ltd v Diesel SpA, in which the ECJ stated, among other things, that infringement in a member state of transit under an external transit procedure from an EU member state to another member state in which the mark is not protected occurs only:

"when the goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that member state of transit."

The District Court of Helsinki stated that the Montex decision related to the free movement of goods between EU countries, but that, in this case, the question was about the interpretation of Section 4(1) of the Finnish Trademark Act. According to the court, Section 4(1) of the act covers all kinds of customs proceedings in which counterfeit goods can be seized. The court explained that the act allows Customs to seize goods which may infringe trademark rights that are valid in Finland, even if the goods are in transit between countries outside the European Union.

In its decision, the court also referred to the cases of Montres Rolex SA and The Polo/Lauren Company LP v PT Dwidua Langgeng Pratama International Freight Forwarders, and stated that the preliminary rulings in these cases were not overruled by the ruling in the similar cases of Montex or Class International BV v Colgate Palmolive Company.

Thus, the court ruled that the customs procedure had been properly exercised. It also concluded that Intermar's JUMP mark was confusingly similar to adidas's three-stripe mark, and was therefore infringing.

Paula Sailas, Berggren Oy Ab, Helsinki