The Market Court: An Apparatus and Method for Treating Pulp Does Not Involve an Inventive Step

The Market Court issued a patent decision 454/16 on 21 July 2016. The court ruled that the applied invention (Apparatus and method for treating pulp) is not patentable because the patent claims do not involve an inventive step. As a result, the court ordered PRH to revoke the patent FI 122775.

Background

Andritz Oy (Andritz) sought patent protection on its invention called "Apparatus and method for treating pulp" on 7 September 2004. The application consisted of two independent claims (1 and 15) and dependent claims 2-14 and 16-24. The Patent and Registration Office (PRH) granted a patent for the invention (FI 122775) on 29 June 2009.

FI 122775, Figs. 1a-1b.

Metso Paper Sweden AB (Metso) lodged an invalidation claim against the patent. During the invalidity proceedings at PRH, Andritz filed amended claims first on 16 October 2013 and later on 12 May 2014. PRH granted a patent for the invention on 1 December 2014 in accordance with the amended claims provided on 12 May 2014 (independent claims 1 and 12 and dependent claims 2-11 and 13-21).

Later on, the company name Metso was changed to Valmet AB (Valmet).

Valmet did not agree with the decision of PRH and lodged an appeal at the Market Court. Valmet requested the Market Court to reverse the decision of PRH.

The Market Court

According to section 1 paragraph 1 of the Patents Act (550/1967), anyone who has, in any field of technology, made an invention which is susceptible of industrial application, or his or her successor in title, is entitled, on application, to a patent and thereby to the exclusive right to exploit the invention commercially, in accordance with this Act.

According to section 2 of the Act, patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

According to section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of sections 1 and 2.

The Applied Claims

The independent claims 1 and 12 (translated with the help of CA2578004 A1):

1. An apparatus for treating pulp, said apparatus comprising at least one liquid-permeable surface rotating around a shaft, onto which surface a pulp layer is formed, means for feeding the pulp being treated into the apparatus, means for discharging the treated pulp from the apparatus and means for removing filtrates from the apparatus, characterized in that the apparatus is provided with at least one inside construction for forming at least two treatment sections in the apparatus in such a way that each of the sections is connected to means for feeding at least one pulp so that the pulps treated in the sections come from essentially different treatment stages and to pulp removal means so that the treated pulps are removed from the apparatus separately, whereby the apparatus comprises a first and a second treatment section, the pulp feeding means of the first thereof being connected to a first treatment stage with first treatment conditions and the pulp feeding means of the second thereof being connected to a second treatment stage with second conditions.

12. A method for treating pulp, in which method the pulp is fed onto a liquid-permeable surface rotating around a shaft of the treatment apparatus, onto which surface a pulp layer is formed, wherefrom liquid is removed, and the treated pulp is removed from the apparatus, characterized in that a first layer of pulp is formed on the rotating surface, said pulp coming from a first treatment stage, and in a distance from the first layer in the longitudinal direction of the shaft a second pulp layer is formed, said pulp coming from a second treatment stage, and the pulp layers are treated essentially separately from each other.

Prior Art

The prior art in this case consists of the following documents:

O1: US 5641402
O2: US 5275024
O3: WO 92/22703
O4: US 4551248.

Novelty and Inventive Step

The court stated that the drum filter defined in the applied invention is new compared to the solutions defined in the prior art. 

The court then moved on to assess the inventive step regarding the claims 1 and 12.

The court considered that the apparatus described in the claim 1 and the apparatus described in the prior art O1 have only one difference: the former is describing a drum filter whereas the latter is describing a disc filter.

The court stated that the invention described in the O1 is solving the same problem as the drum filter described in the claim 1 of the applied invention. The court also stated that, according to the description of the O1, the disc filter and drum filter are alternatives regarding apparatus for treating pulp in the pulp and paper industry.

According to the court, the use of drum filter does not require any particular technical solution. Consequently, it is considered to be obvious to the person skilled in the art. The technical solution defined in the claim 1 does not involve an inventive step.

The method described in the claim 12 comprises the same technical features as the apparatus described in the claim 1. Consequently, this claim does not involve an inventive step, either.

The invention is not patentable.

As a result, the court returned the case to PRH and ordered PRH to revoke the patent FI 122775.

The Market Court: A Method and System for Relaying and Managing Call Messages Is Not Patentable

The Market Court issued a patent decision 453/16 on 20 July 2016. The court ruled that the applied invention (Method and system for relaying and managing call messages) is not patentable because the original patent claims are lacking novelty and they do not involve an inventive step. Furthermore, the secondary claims do not involve an inventive step.

Background

Oy Exrei Ab (Exrei) sought patent protection on its invention called "Method and system for relaying and managing call messages" on 31 January 2006. The application consisted of three independent claims (1, 21 and 41) and dependent claims 2-20, 22-40 and 42-43. The Patent and Registration Office (PRH) granted a patent for the invention (FI 117912) on 14 April 2007.

FI 117912, Fig. 2.

Miratel Oy (Miratel) lodged an invalidation claim against the patent, but PRH dismissed the invalidation claim on 6 May 2008. Miratel then lodged an appeal at the Board of Appeal at PRH. The Board of Appeal accepted the invalidation claim and returned the case to PRH on 14 October 2011. PRH revoked the patent on 17 February 2012. According to PRH, the independent and dependent claims do not involve an inventive step.

Later on, the company name Exrei was changed to Everon Ab (Everon) and Miratel into Ascom Miratel Oy (Ascom Miratel).
  
Everon did not agree with the decision of PRH and lodged an appeal at the Market Court. Everon requested the Market Court to reverse the decision of PRH. 

Furthermore, according to Everon, the patent application should be accepted in accordance with the claims that were under examination in the decision of PRH or, if that is not possible, in accordance with the claims attached into the appeal (independent claims 1, 17 and 33 and dependent claims 2-16, 18-32 and 34-35).

The Market Court

According to section 2 of the Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

According to section 8 paragraph 2 of the Act, the application shall contain [inter alia] a precise statement of the subject matter for which patent protection is sought.

According to section 13 of the Act, an application for a patent may not be amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed.

According to section 25 paragraph 1 of the Act, the Patent Authority shall revoke a patent on account of an opposition [inter alia] if the patent relates to an invention that does not satisfy the requirements of section 2, or if the patent contains subject matter not included in the application as filed.

Prior Art

The prior art in this case consists of documents D1-D20 (a list with document names can be found in the decision). However, the court decided to dismiss the D4 because its publication date was not unambiguous.

The Original Patent Claims

The independent claims 1, 21 and 41 (translated with the help of US 20090016511 A1):

1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider.

21. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider.

41. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider.

The court considered that all the features of the independent claim 1 are found in a prior art D1a. The D1a is an issue of a customer magazine produced by Ascom Miratel. The D1a introduces a software called CareWin. The software is used to receive safety calls and alarms. This software is, according to the court, a method for relaying and managing call messages, in which a customer terminal (safety phone) sends a call and a service terminal (caretaker of a person responsible for the service) receives an assignment and in which there is a transmission of the call information from the customer terminal to the server (CareWin-software).

The court then stated that the independent claims 21 and 41 consist of the same technical features as defined in the claim 1.

The court concluded that the independent claims 1, 21 and 41 are lacking novelty and they do not involve an inventive step. 

The Secondary Patent Claims

The independent claims 1, 17 and 33 (translated with the help of US 20090016511 A1, the changes are written in red):

1. A method for relaying and managing service calls, wherein a customer terminal sends a call and a service terminal receives an assignment, characterised by transmission of the call information from the customer terminal to the server (120), in which the server-based data on the service providers comprise data for establishing a connection to the service provider's service terminal and additional service provider data, whereby a call arriving at the server activates the server's selection of a service provider on the basis of the data contained in the call (130) and said additional data (140), whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and to send an assignment based on the data of the call to the service terminal (150) in accordance with the contact information of the selected service provider, whereby the method includes 

- the server comprising a log memory for storing data pertaining to calls that have arrived and/or assignments sent,  

- storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and 

- invoicing the customer for the services on the basis of said log data.

17. A system for relaying and managing service calls that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments that is characterised by the system comprising a server (210) that has memory (214) for storing the information of the service providers, which comprises data for establishing a connection to the service provider's service terminal (270) and additional service provider data, with the system further comprising the means (212, 230-250) for relaying the call data from a customer terminal (230, 250) to the server (210), whereby the server is arranged to be activated on the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and perform selection of a service provider on the basis of the data contained in the call and said additional data, and to send an assignment based on the data of the call to the service terminal (270) in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes 

- a log memory for storing data pertaining to calls that have arrived and/or assignments sent, 

- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and 

- means (214, 218) for invoicing the customer for the services on the basis of said log data.

33. A server (210) for relaying and managing service calls in a system that comprises customer terminals (230, 250) for sending calls and service terminals (270) for receiving assignments, characterised by the server having memory (214) for storing the information of the service providers, which contains data for establishing a connection to the service provider's service terminal and additional service provider data, with the server further comprising the means (212) for receiving call data from a customer terminal, whereby the server is arranged to be activated upon the incoming call, whereby the said additional data comprising data concerning the services provided by the service provider, whereby the selection of the service provider will be based at least on the call- contained data concerning the service need and said additional data on the services provided by the service provider, and select a service provider on the basis of the data contained in the call and the said additional data, and to send (216) an assignment based on the data of the call to the service terminal in accordance with the contact information of the selected service provider;
-whereby the said server of the system includes 

- a log memory for storing data pertaining to calls that have arrived and/or assignments sent, 

- means (214, 218) for storing an acknowledgement saved on the server concerning the reception of an assignment by a service provider and/or an acknowledgement for the completion of a service and

- means (214, 218) for invoicing the customer for the services on the basis of said log data.

Ascom Miratel argued first that the claims are amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. Furthermore, Ascom Miratel argued also that the amended application does not contain a precise statement of the subject matter for which patent protection is sought. The court dismissed these arguments.

Now it was time to assess whether the invention, in the form of the secondary claims, is new in relation to what was known before the filing date of the patent application, and also involves an inventive step. 

The secondary claim 1 defines, inter alia, how the server comprises a log memory for storing data pertaining to calls that have arrived and/or assignments sent and how the invoicing is based on the log data. The prior art D1a does not contain any information of storing data pertaining to calls that have arrived and/or assignments sent. Therefore, according to the court, the invention defined in the claim 1 is new in relation to the prior art D1a.

However, the court stated that the description of the invention does not explain any technical effect achieved based on the type of data stored and the type of log data used in the invoicing. The description only explains that the method is solving a problem regarding the automation. The court then added that also the method defined in the prior art D1a is automatized.

The court then stated that it would be obvious for the person skilled in the art to use the stored call and/or assignment data in invoicing. The person skilled in the art also understands that the software introduced in the prior art D1a might comprise a feature, or it is possible to add such a feature into the software, in which data, pertaining to calls that have arrived and/or assignments sent, is used.

Therefore, according to the court, the invention defined in the secondary claim 1 does not involve an inventive step.

The court then stated that the secondary claims 17 and 33 comprise the same technical features as the secondary claim 1. Consequently, these claims do not involve an inventive step, either.

The invention is not patentable.

The action is dismissed.

The Market Court: The Applied Invention (Limitation of Voltage Pulse) Does Not Involve an Inventive Step

The Market Court issued a patent decision 452/16 on 20 July 2016. The court ruled that the applied invention (Limitation of voltage pulse) is not patentable because it does not involve an inventive step.

Background

Va­con Oyj (Vacon) sought patent protection on its invention called "Limitation of voltage pulse" on 20 June 2007. The application consisted of two independent claims (1 and 5) and dependent claims 2-4 and 6-12. The Patent and Registration Office (PRH) granted a patent for the invention (FI 119669) on 30 January 2009.

FI 119669, Figs. 1-2.

ABB Oy (ABB) lodged an invalidation claim against the patent. Vacon answered by filing amended patent claims (independent claims 1 and 5 and dependent claims 2-4 and 6-11), but PRH accepted the invalidation claim and revoked the patent on 22 March 2012. According to PRH, the independent claims 1 and 5 are lacking novelty and the claims 1-11 do not involve an inventive step.
  
Vacon did not agree with the decision of PRH and lodged an appeal at the Market Court. Vacon requested the Market Court to reverse the decision of PRH. Furthermore, according to Vacon, the patent application should be accepted in accordance with the amended claims that were under examination in the decision of PRH.

The Market Court  

According to section 2 of the Patents Act (550/1967), patents may only be granted for inventions which are new in relation to what was known before the filing date of the patent application, and which also involve an inventive step with respect thereto. Everything made available to the public in writing, in lectures, by public use or otherwise is considered to be known.

The independent claims 1 and 5 (translated with the help of EP2020742): 

Claim 1:

Method for controlling the output voltage pulses of a PWM frequency converter, in which PWM frequency converter is a network bridge (10) for rectifying the alternating voltage of the supply network into the DC voltage (U_DC) of the DC intermediate circuit, which is filtered with a filtering capacitor (C_DC), a load bridge (11) comprised of phase switches implemented with power semiconductor components, which forms the AC output voltage (U, V, W) from the DC voltage of the intermediate circuit for controlling the load (M),

characterized in that for setting the average speed of change in the output voltage in connection with each change of state of the output voltage at least one power component controlled by a phase switch is controlled such that before the output voltage remains in its position subsequent to the change of state it is on at least once for a short period, typically of less than 1µs (a micropulse), in the position prevailing before the change of state, and a filter containing passive components, with which the voltage of the micropulses is filtered into the final output voltage of the frequency converter.

Claim 5:

Arrangement for controlling the output voltage pulses of a PWM frequency converter, in which PWM frequency converter is a network bridge (10) for rectifying the alternating voltage of the supply network into the DC voltage (U_DC) of the DC intermediate circuit, which is filtered with a filtering capacitor (C_DC), a load bridge (11) comprised of phase switches implemented with power semiconductor components, which forms the AC output voltage (U, V, W) from the DC voltage of the intermediate circuit for controlling the load (M), and a control unit,

characterized in that for setting the average speed of change in the output voltage in connection with each change of state of the output voltage at least one power component controlled by a phase switch is fitted to be controlled such that before the output voltage remains in its position subsequent to the change of state it is on at least once for a short period, typically of less than 1µs (a micropulse), in the position prevailing before the change of state, and that the arrangement comprises a filter containing passive components, with which the voltage of the micropulses is filtered into the final output voltage of the frequency converter.

Novelty

Prior art contains the following documents:

- D1: Deisenroth H., Trabert C. Vermeidung von Überspannungen vei Pulsumrichterantrieben. ETZ. 1993, Bd. 114, Heft 17, s. 1060–1066, and

- D2: DE 4203054.

The court considered that the invention is new in relation to what was known before the filing date of the patent application. According to the court, the prior art does not include a solution in which a micropulse technique is combined with a filter containing passive components.

Inventive step

The court considered that the purpose of the combination of a micropulse technique and a filter containing passive components is to reduce the average speed of change in the output voltage. If the speed of change is too high, it could damage a motor connected to the frequency converter. The description of the invention does not define any other effect which is acquired by using simultaneously a micropulse technique and a filter containing passive components.

According to the court, the reduction of the speed of change by using a micropulse technique or a filter containing passive components is known from the prior art D1. Therefore, it would have been obvious to the person skilled in the art to combine a micropulse technique with a filter containing passive components.

The appellant also argued that the invention is reducing the costs, size and weight of the required apparatus. The court dismissed these arguments because the claims do not include any features that would clearly highlight these benefits.

Therefore, the invention does not involve an inventive step.

The action was dismissed.

New Registry-Registrar Model Enters into Force for .FI Domain Names

The Finnish domain name system will change after the new legislation included in the Information Society Code (917/2014) enters into force on 5 September 2016. After the change, a person or a company will obtain .fi domain names and all related services from their own registrar. Therefore, the internationally known registry-registrar model enters into force in Finland.

The old system, where the Finnish Communications Regulatory Authority (FICORA) has sold .fi domain names, comes to an end. FICORA is going to continue to take care of the technical maintenance of the domain name register.

Here is a summary of the relevant changes:

- All the .fi domain name holders will have their own registrar managing domain names on behalf of the holder.

- Registrars will provide all the related services, such as applications, renewals, transfers, switching registrars, terminations and updating details.

- Local presence and age requirements (age limit of 15) for applications don't exist anymore. Therefore, the fi-domain names are available for a wider audience.

- A combination of first name and last name can be applied by anyone.

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FICORA's own website contains information about the new practice.

The Finnish Copyright Society Kopiosto Introduced a Copyright Edutainment Game

In August 2016, the Finnish Copyright Society Kopiosto introduced an edutainment game called Kopiraittila (the game is in Finnish and Swedish). The game is intended for children and young people.

In the game, the player will enter the fictional school of Kopiraittila. At first, the player is in a school hallway and there are four doors. Each door has a sign which determines the level of the player; school classes 1-2, 3-4, 5-7 and 8-9. The player can enter the classroom by clicking the door. The classrooms contain quizzes, memory games and spinning wheels. Kopiosto has stated that it is planning to publish material also for secondary school students.

The game informs the players about the existence of different kinds of copyrights and emphasizes the correct use of sources. Different copyright issues are involved in everyday scenarios, such as the use of Internet and social media, creation of videos and photographing. The game teaches the players to respect the copyrights of others and to be aware of their own copyrights.

"We hope that this visual edutainment material will inspire the students and teachers to create works and to respect copyrights. If one needs to check the correct copyright policy, it is easy to return to the school of Kopiraittila" (FinnIPR translation), says Kirsi Salmela, Licensing Manager, Kopiosto ry.

The game is created by a creative digital agency JCO Digital.

The Market Court: FINKA (Figure) Is Confusable with FINKA for Vodka

The Market Court issued a trademark decision 432/16 on 8 July 2016. The court ruled that the applied national trademark FINKA (figure) is confusable with the earlier European Union trademark FINKA. Both marks are registered in class 33.

Background

Sai­maa Be­ve­ra­ges Oy Ltd (Saimaa) applied to register a figure mark FINKA in class 33 for vodka on 20 August 2014.

Application no. T201451621.

The Patent and Registration Office (PRH) denied the registration (decision 8 April 2015) because the mark is liable to be confused with an earlier European Union trademark (EUTM) registration FINKA (no. 004750634), registered on 13 October 2006. The EUTM FINKA is registered in class 33 for al­co­ho­lic be­ve­ra­ges, in par­ti­cu­lar vod­ka.

Saimaa filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 432/16 on 8 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 9 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a European Union trademark within the meaning of section 57 that has been registered on the basis of an earlier application.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court referred to the established case-law and stated the following: 

There is a likelihood of confusion where the public can be mistaken as to the origin of the goods or services in question.

Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.

In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. The comparison of the goods or services should also focus on their distribution channels and their usual origin.

The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.

The applied mark FINKA (figure) covers the following goods in the class 33: vodka. The earlier EUTM FINKA is registered in class 33 for al­co­ho­lic be­ve­ra­ges, in par­ti­cu­lar vod­ka.

These goods are consequently considered identical.

The court stated that the average Finnish consumer of the category of goods concerned is deemed to be reasonably observant.

The applied mark FINKA is a figure mark and it is written in capital letters. The mark has a rather usual font. The letter A is stylized. 

The earlier EUTM FINKA is a word mark that consists of a word "FINKA". Neither of the parties argued that the word "FINKA" would have any generally known meanings regarding the goods in question. Therefore, the EUTM FINKA has a normal distinctiveness for the goods.

The conflicting marks have a very high degree of visual similarity, despite the stylized letter A in the applied mark. Furthermore, the marks are aurally identical. The conceptual similarity cannot be compared since the word "FINKA" does not have a clear meaning among the relevant public.

The court stated that the conflicting marks have identical goods. Furthermore, the marks have a very high degree of similarity. The court concluded that the applied mark FINKA (figure) is confusable with the mark FINKA.  

The action was dismissed.

The Market Court: CJ (figure) Is Confusable with CJ (figure) for Goods In Class 5

The Market Court issued a trademark decision 431/16 on 8 July 2016. The court ruled that the applied national trademark CJ (figure) is confusable with the earlier European Union trademark CJ (figure). Both marks are registered for goods in class 5.

Background

CJ Cor­po­ra­tion (CJC) applied to register a national trademark CJ (figure) in class 5 for the following goods:

pharmaceutical preparations; antihypertensives; medical preparations; pharmaceutical preparations for treating sensory organ disorders; nervines; chemical preparations for medical purposes; ferments for pharmaceutical purposes; pharmaceutical preparations for diagnosis; food supplements; pain relief preparations; microorganisms (cultures of -) for medical; filled first-aid kits; cotton for medical use; baby foods; lacteal flour for babies; lactose for pharmaceutical purposes; medicated diapers; insecticides; moth proof paper; veterinary preparations; protein supplements for animals; nutritional supplements for animal foodstuffs.

Application no. T201452181.

The Patent and Registration Office (PRH) denied the registration (decision 13 August 2015) because the mark is liable to be confused with an earlier European Union trademark (EUTM) registration CJ (figure, no. 5400494), registered on 29 November 2007. The EUTM CJ (figure) is registered in class 5 for pharmaceutical, veterinary and sanitary preparations; sanitary preparations for medical purposes, dietetic substances for medical purposes, foodstuffs for babies, plasters, materials for dressing, material for stopping teeth and dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides. The mark covers also various goods in class 10.

EUTM no. 5400494.

CJC filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 431/16 on 8 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 9 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a European Union trademark within the meaning of section 57 that has been registered on the basis of an earlier application.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court assessed first the goods of the conflicting marks and stated that the goods are identical or at least highly similar.

The court assessed then the relevant public. The court referred to the case-law of the Court of Justice (CJ). CJ has ruled that:

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question. [See C-342/97 Lloyd, para 26.]

The appellant argued that the goods of the applied mark are mainly prescription drugs and therefore the relevant public does not have an influence on choosing the products and is not able to compare different products and confuse them. 

The court referred to the case-law of the General Court (GC):

As regards the relevant public, it is established case-law that, when the goods in question are medicines, the relevant public is composed of medical professionals, on the one hand, and patients, as the end consumers, on the other.

According to the case-law, medical professionals have a high degree of attentiveness when prescribing medicines. Moreover, with regard to end consumers, it is apparent from the case-law that, in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect where those goods affect their state of health, and that these consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products. Thus medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect. [See T-331/09 Novartis, paras 21 and 26.]

The court stated that the relevant public has a high degree of attentiveness for these goods (prescription drugs).

However, some of the goods, regarding both marks, are daily consumer goods and the relevant public of these goods is composed of all consumers. The court stated that these goods cannot be regarded as receiving a high degree of attentiveness.

The court referred again to the case-law of GC. GC has ruled that if the goods at issue are targeted at both the general public and professionals (e.g. doctors), the relevant public consists of the general public because it is the one displaying the lower degree of attentiveness (See  T-220/09 ERGO, para. 21). [Compare with T-126/03 ALADIN, para. 81.]

Therefore, the relevant public in this case is composed of reasonably well-informed and reasonably observant and circumspect average consumers. This kind of average consumer does not have a heightened degree of attentiveness regarding the goods in question. 

It was now time to compare the two marks. The court referred again to the case-law of CJ. CJ has ruled that

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. [See C-251/95 SABEL, paras 22-23.]

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole. Although the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. [See C-20/14 BGW, paras 36-37.]

It must be stated that where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant. [See T-3/04 KINJI by SPA, para 45 and T-112/06 In­ter-Ikea, para 45.]

Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark. [T-61/15 1&1 In­ter­net, para 61.]

The court stated that the applied mark CJ slightly resembles a four-leaf clover where the word element CJ is one leaf and the blue, orange and red figurative elements are the remaining leafs. Since the word element CJ is lacking any straightforward meaning or connection to the designated goods, it can be considered as having a normal degree of distinctiveness. According to the court, the word element is the most dominant and distinctive element of the mark. However, the figurative elements are not completely insignificant.

The court stated that the earlier EUTM CJ consists of blue letter C and grey letter J and two curves. The court stated that the word element CJ can be considered as having a normal degree of distinctiveness and it is also the most dominant and distinctive element of the mark. The court emphasized again that the figurative elements are not completely insignificant.

The letter combination CJ is included in both marks. The letters also have a similar font even though the letters have different colors. According to the court, there is a rather high degree of visual similarity because the letter element is the most dominant element in both marks, despite the figurative elements in the marks.

The court stated then that the marks are aurally identical.

The court continued and stated that the conceptual similarity cannot be compared because neither the letter combination CJ nor the figurative elements have any clear conceptual meaning.

The court stated that the conflicting marks have a high degree of similarity based on the assessment above. The court concluded that the relevant public finds the marks confusingly similar.

The action was dismissed.