Roche receives remedy in RENNIE infringement decision
In Roche Consumer Health (Worldwide) Ltd v Vitabalans Oy (Case S2001/701, 1191), the Supreme Court of Finland has confirmed the well-known status in Finland of the plaintiff's RENNIE mark and has ruled that the defendant's use of RENICHEW for a similar product infringed that mark.
Roche Consumer Health (Worldwide) Ltd has used the trademark RENNIE over several decades in Finland for a medical preparation for pyrosis, heartburn and hyperchlorhydria. The product is the market leader in its field in Finland. Vitabalans Oy, a Finnish company, started using the mark RENICHEW for a similar product. Roche filed a complaint with the courts, alleging trademark infringement. The first instance court and the Court of Appeal upheld the claim, and Vitabalans appealed to the Supreme Court.
The court first considered that the scope of protection for the RENNIE trademark should be extensive, based on (i) its imaginative and highly distinctive nature, and (ii) the fact that it has become established and is well known in Finland. It went on to state that the prefix 'Reni' was the distinctive and dominant element of Vitabalans's RENICHEW mark. The court examined the degree of similarity between this element and the RENNIE mark, and concluded that they were very similar. It noted that the goods covered by the marks and the product packaging used by the parties were also similar. Consumers, said the court, were likely to consider the products sold under the RENNIE and RENICHEW marks as alternatives, belonging to the same product family and originating from the same or economically bound sources.
Accordingly, the court held that RENICHEW was confusingly similar to the RENNIE mark and upheld Roche's infringement claim.
Sanna Aspola, Berggren Oy Ab, Helsinki
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