Supreme Administrative Court allows registration of promotional slogan as trademark

Finland

The Supreme Administrative Court of Finland has issued a decision regarding the registration of a promotional slogan as a trademark.

The court overturned the earlier refusal by the Finnish Trademark Office and its Board of Appeals, and accepted the mark TEEMME SEN MAHDOLLISEKSI (‘We make it possible’ in English) for registration in Classes 35 and 38 of the Nice Classification.

In 2009 Nordea Bank AB (Publ), which is based in Stockholm, Sweden, applied for the registration of its slogan mark TEEMME SEN MAHDOLLISEKSI in Classes 9, 35 and 38. Several years earlier, the applicant had successfully registered an identical mark and multiple translations thereof as Community trademarks (CTMs), mainly for services in Class 36.

The Trademark Office found no obstacle to the registration of the mark in Class 9. However, with regard to the services claimed in Classes 35 and 38, the office held that the mark was merely a promotional slogan that was devoid of distinctiveness.

According to the office, the mark merely indicated that the service provider “makes the realisation of certain things possible”. The expression would thus remain an obvious truth that lacked distinctive character. Moreover, the Trademark Office assumed (without basing this finding on any evidence) that this slogan was commonly used by traders others than the applicant.

The first round of administrative appeal proved to be unsuccessful, as the Board of Appeals of the Trademark Office upheld the office’s decision.

The applicant filed an appeal to the Supreme Administrative Court, arguing that the slogan in question triggered in the minds of the relevant public a cognitive process and an interpretative effort. Therefore, the mark was not directly descriptive of the services, even though it was a promotional slogan. The applicant referred to the decisions of the Court of Justice of the European Union (ECJ) in Audi v OHIM (VORSPRUNG DURCH TECHNIK) (Case C-398/08 P) and Erpo Möbelwerk v OHIM (Case C-64/02 P), and asked that the court follow the guidance given in these cases.

First, the Supreme Administrative Court confirmed the principles set forth in the case law of the ECJ, stating that slogans must be treated in the same way as other types of trademarks.

The court found that, in Finnish, the slogan at issue does imply that the service provider enables a possible realisation of “something”. However, what that “something” might be exactly cannot reasonably be concluded from the wording of the phrase. Linguistically, the mark had no direct meaning that would be descriptive of the services in Classes 35 and 38.

Further, the court disagreed with the argument of the Trademark Office relating to the “common use” of the slogan, as no evidence had been brought forward to prove that this was de facto the case.

Finally, the court confirmed the relevance of the applicant’s earlier CTM registrations, and found no reason why distinctiveness should be assessed differently in Finland.

The Supreme Administrative Court thus concluded that TEEMME SEN MAHDOLLISEKSI could be registered as a national trademark in accordance with the original application.

Jukka Palm, Berggren Oy Ab, Helsinki

The author represented the applicant-appellant throughout the registration and appeal proceedings

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