Background
Julius Sämann Ltd (JS) is the holder of registered European Union trademarks (EUTM):
JS is also the holder of a national trademark no. 109644 (figure), registered on 20 November 1990.
All the mentioned marks are registered in class 5 for Air fresheners. The air fresheners of JS are most commonly seen hanging from rear-view mirrors of vehicles.
On 22 January 2014, JS sought to register a figure mark (application no. 012525507) as a EUTM for goods in class 3 (Air fragrancing preparations). This applied mark is visually identical with the EUTM no. 000091991.
- no. 004444791 WUNDER-BAUM (word), registered on 20 June 2006,
- no. 000091991 (figure), registered on 1 December 1998, and
- no. 003071305 (3D), registered on 11 May 2005
JS is also the holder of a national trademark no. 109644 (figure), registered on 20 November 1990.
All the mentioned marks are registered in class 5 for Air fresheners. The air fresheners of JS are most commonly seen hanging from rear-view mirrors of vehicles.
On 22 January 2014, JS sought to register a figure mark (application no. 012525507) as a EUTM for goods in class 3 (Air fragrancing preparations). This applied mark is visually identical with the EUTM no. 000091991.
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| No. 000091991. |
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| No. 003071305. |
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| No. 109644. |
A, B and C are the members of a Finnish sketch comedy and musical trio called Justimus. The trio made a song and an album called Wunderboy and those were published by a record label Jiffel Entertainment Oy (Jiffel) in spring 2014. The trio has also a music video for the song Wunderboy, the video is available on YouTube (3,9 million views as of 10 July 2016) [Update on 30 August 2016: the official video was deleted from YouTube].
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| A Wunderboy air freshener (an attachment from the court's decision). |
JS was not amused about the creation of Wunderboy and launched trademark infringement proceedings against the trio and their record label in the Market Court. JS also brought an action for an interim injunction against the trio, but the court rejected the application in its decision 628/15 on 17 September 2015.
JS requested that the Market Court:
1. Affirms that the following trademarks have become established through use and have a reputation in Finland for Air fresheners:
2. Affirms that a separate WUNDER-BAUM figure mark has become established through use.
3. Affirms that Jiffel, A, B and C have infringed its trademarks described above.
4. Affirms that Jiffel, A, B and C are guilty of unfair business practice because they have used signs that are similar to the trademarks that JS uses. Jiffel, A, B and C have used the signs in their marketing, products and packages.
5. Prohibits Jiffel, A, B and C from proceeding or repeating the infringement mentioned in the request no. 3.
6. Prohibits Jiffel, A, B and C from proceeding or repeating the unfair business practice mentioned in the request no. 4. The court should impose a conditional fine of 100 000 euros to reinforce the order.
7. Orders Jiffel to pay reasonable compensation for the use of the marks, in total 50 000 euros plus legal interest.
8. Orders Jiffel to pay compensation for all the damage caused by the infringement, in total 50 000 euros plus legal interest.
9. orders Jiffel to pay JS's legal fees, in total 78 272,21 euros plus legal interest.
1. Affirms that the following trademarks have become established through use and have a reputation in Finland for Air fresheners:
- EUTM no. 004444791 WUNDER-BAUM (word),
- EUTM no. 000091991 (figure) and
- EUTM no. 003071305 (3D),
- national trademark no. 109644 (figure) and
- the figure mark represented in the EUTM application no. 012525507.
2. Affirms that a separate WUNDER-BAUM figure mark has become established through use.
3. Affirms that Jiffel, A, B and C have infringed its trademarks described above.
4. Affirms that Jiffel, A, B and C are guilty of unfair business practice because they have used signs that are similar to the trademarks that JS uses. Jiffel, A, B and C have used the signs in their marketing, products and packages.
5. Prohibits Jiffel, A, B and C from proceeding or repeating the infringement mentioned in the request no. 3.
6. Prohibits Jiffel, A, B and C from proceeding or repeating the unfair business practice mentioned in the request no. 4. The court should impose a conditional fine of 100 000 euros to reinforce the order.
7. Orders Jiffel to pay reasonable compensation for the use of the marks, in total 50 000 euros plus legal interest.
8. Orders Jiffel to pay compensation for all the damage caused by the infringement, in total 50 000 euros plus legal interest.
9. orders Jiffel to pay JS's legal fees, in total 78 272,21 euros plus legal interest.
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The Market Court issued its decision 374/16 (186 paragraphs) on 17 June 2016.
The Market Court
The defendants raised first some procedural arguments, but the court dismissed these. After that it was time to assess the request no.1 of the plaintiff, i.e. do the trademarks of the plaintiff have a reputation? The court stated that there is no need to assess the establishment of the marks mentioned in the request no. 1 because the trademark registrations already provide exclusive rights for the plaintiff and the plaintiff has not claimed that the trademarks have become established for some other goods than the ones that are already covered by the registrations.
1. Do the trademarks of the plaintiff have a reputation?
The court referred to the case-law of CJ. CJ has ruled in its decision C-375/97 General Motors (paras 26 and 27) that:
The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
The court stated that the trademarked goods of the plaintiff are inexpensive ordinary commodities. The average consumer of the category of goods concerned is deemed to be
reasonably well informed and reasonably observant and circumspect.
The plaintiff had to prove that its trademarks have had a reputation in Finland by the time of the alleged infringement in spring 2014. Each mark was assessed separately.
1.1 The reputation of the EUTM no. 004444791 WUNDER-BAUM (word)
The WUNDER-BAUM air fresheners have had a high market share (76,7 percent) in Finland during the years 2012 and 2013 regarding car air fresheners. Before the years 2012-2013, the market share has been 69,5-75,5 percent. The court stated that these statistics do not provide a clear picture of the market share regarding all air fresheners but the high market share regarding car air fresheners does support the claim that the WUNDER-BAUM has a strong reputation also regarding air fresheners in general.
The company is using more than 20 000 euros per year on marketing. The court stated that these amounts are not very significant but one has to take into account the fact that the mark has been known and has been used for decades in Finland.
The plaintiff also provided a brand new market survey of 400 adults (dated 24 February 2016). Respondents were asked to mention a name of any car air freshener product and 62 percent of the respondents mentioned the name "Wunderbaum". Therefore, the spontaneous (or unaided) awareness was high. Moreover, 86 percent of the respondents chose the name Wunderbaum from a list that had five other product names. Therefore, the prompted (or aided) awareness was also high. The court stated that this survey does not provide a clear picture of the reputation regarding all air fresheners. Furthermore, the number of respondents is rather small. However, the survey still provides, according to the court, some information about the scale of the reputation. Even though the survey was done in 2016, two years after the conduct of the defendants, the court ruled that the survey is valid because the WUNDER-BAUM word mark has been in use for a long time and there was no reason to assume that any significant changes had occurred in the reputation of the mark. The court stated that the result of the survey is a strong indication of reputation.
The court concluded that the WUNDER-BAUM word mark has had a reputation in Finland since spring 2014 regarding air fresheners.
1.2 The reputation of the EUTM no. 000091991 (figure)
The plaintiff referred to the same evidence mentioned above. In the market survey, the respondents were shown a figure of an evergreen tree. According to the survey, 94 percent of the respondents found this figure familiar and 73 percent of the respondents answered "Wunderbaum" when they were asked to name the product. The figure shown in the survey was not exactly identical with the registered EUTM. There was a small white circle in the upper part of the tree and a bow tie pattern in the stem of the tree.
The court concluded that the figure mark has had a reputation in Finland since spring 2014, despite the debilitating factors in the market survey.
Because the applied mark represented in the EUTM application no. 012525507 is visually identical with the EUTM no. 000091991, there was no need to assess the reputation separately.
1.3 The reputation of the EUTM no. 003071305 (3D)
The plaintiff referred to the same evidence mentioned above. The court concluded that the 3D mark has had a reputation in Finland since spring 2014.
1.4 The reputation of the national trademark no. 109644 (figure)
The plaintiff referred to the same evidence mentioned above. The court concluded that the 3D mark has had a reputation in Finland since spring 2014 even though the diagonal text element WUNDER-BAUM is not used in all the WUNDER-BAUM air fresheners.
1.5 Conclusions
The court concluded that all the marks have had a reputation in Finland since spring 2014.
2. Has the separate WUNDER-BAUM figure mark become established through use?
According to section 2 paragraph 1 of the Finnish Trademarks Act (7/1964), exclusive rights in a trademark may be acquired, even without registration, after the mark has become established. According to section 2 paragraph 3 of the Act, a trade symbol shall be considered established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.
According to section 2 paragraph 1 of the Finnish Trademarks Act (7/1964), exclusive rights in a trademark may be acquired, even without registration, after the mark has become established. According to section 2 paragraph 3 of the Act, a trade symbol shall be considered established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.
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| The separate WUNDER-BAUM figure mark (an attachment from the court's decision). |
The plaintiff provided evidence that the figure mark WUNDER-BAUM has been in use since 2009 for packages and marketing regarding air fresheners.
The plaintiff also referred to the high sales and high market share described above.
The court stated that the mark has been in use only five years before the spring 2014. According to the court, this fact does not support the establishment, but it does not, per se, deteriorate it either.
The court stated that the plaintiff has not provided any evidence, for example a market survey, that would help the court to assess whether the mark has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.
However, the court concluded that based on the distinctiveness and the very wide use of the mark, the figure mark WUNDER-BAUM has become established by spring 2014.
3. Is there an infringement?
3.1 Justimus air fresheners in the shape of an evergreen tree
3.1.1 The legal basis of the likelihood of confusion
According to Article 9(1)(b) of the Community trademark Regulation No 207/2009:
A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
Article 5(1)(b) of the Trademarks Directive 2008/95/EC contains a similar rule. The court stated that the Finnish Trademarks Act must be interpreted in accordance with the Trademarks Directive 2008/95/EC.
According to section 6 of the Trademarks 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 then referred to the case-law of CJ.
CJ has ruled in its decision C-39/97 Canon (paras 26 and 29) that:
CJ has ruled in its decision C-251/95 SABEL (paras 22-23) that:
CJ has ruled in its decision C-39/97 Canon (paras 26 and 29) that:
There is a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive 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.
CJ has ruled in its decision C-251/95 SABEL (paras 22-23) 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.
CJ has ruled in its decision C-342/97 Lloyd (paras 19-20) that:
The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.
3.1.2. Likelihood of confusion between the EUTM no. 004444791 WUNDER-BAUM (word) and the wunderboy word mark
The defendants have used a word "wunderboy" for air fresheners in the shape of an evergreen tree.
The court assessed first the visual similarity. The court stated that the words WUNDER-BAUM and wunderboy both have the same beginning "wunder". The endings of the words are different in length, also the ending letters are different. The word WUNDER-BAUM has a hyphen whereas the word wunderboy does not. The court also stated that the font of the allegedly infringing sign is irrelevant. Also it does not matter whether the word is written with small letters or capital letters. Therefore, the marks have, to some extent, a visual similarity.
The court then moved on to assess the aural similarity. The court stated that the relevant Finnish public is pronouncing the beginning of the marks similarly ("wunderb"), whereas the pronunciation of the endings is different regarding the last sound ("-aum" and "-oi"). The court considered that the relevant Finnish public is paying more attention on the beginning of the marks. The hyphen has no relevance when assessing the aural similarity. Therefore, there is a high degree of aural similarity.
The court then moved on to assess the conceptual similarity. The court stated that the relevant Finnish public understands, mostly, also English and Swedish, but not German. However, it is likely that the public understands the meaning of the word "wunder" (wonder). On the other hand, it is not likely that the public understands the meaning of the word "baum" (tree). The relevant Finnish public understands that both marks are referring to positively "wonderful" qualities. Therefore, the marks have, to some extent, a conceptual similarity.
The court then moved on to assess the distinctiveness of the WUNDER-BAUM word mark. The court stated that the mark has a normal distinctiveness. However, the court stated that based on the very long-lasting and wide use of the mark, the WUNDER-BAUM word mark has acquired a good distinctiveness through use.
It was now time to draw a conclusion on the likelihood of confusion. The court concluded that based on the strong distinctiveness of the WUNDER-BAUM word mark, the aural similarity between the conflicting marks and the identical goods, there is a likelihood of confusion between the EUTM no. 004444791 WUNDER-BAUM (word) and the wunderboy word mark.
The court then moved on to assess the aural similarity. The court stated that the relevant Finnish public is pronouncing the beginning of the marks similarly ("wunderb"), whereas the pronunciation of the endings is different regarding the last sound ("-aum" and "-oi"). The court considered that the relevant Finnish public is paying more attention on the beginning of the marks. The hyphen has no relevance when assessing the aural similarity. Therefore, there is a high degree of aural similarity.
The court then moved on to assess the conceptual similarity. The court stated that the relevant Finnish public understands, mostly, also English and Swedish, but not German. However, it is likely that the public understands the meaning of the word "wunder" (wonder). On the other hand, it is not likely that the public understands the meaning of the word "baum" (tree). The relevant Finnish public understands that both marks are referring to positively "wonderful" qualities. Therefore, the marks have, to some extent, a conceptual similarity.
The court then moved on to assess the distinctiveness of the WUNDER-BAUM word mark. The court stated that the mark has a normal distinctiveness. However, the court stated that based on the very long-lasting and wide use of the mark, the WUNDER-BAUM word mark has acquired a good distinctiveness through use.
It was now time to draw a conclusion on the likelihood of confusion. The court concluded that based on the strong distinctiveness of the WUNDER-BAUM word mark, the aural similarity between the conflicting marks and the identical goods, there is a likelihood of confusion between the EUTM no. 004444791 WUNDER-BAUM (word) and the wunderboy word mark.
3.1.3 Likelihood of confusion between the EUTM no. 000091991 (figure), the EUTM no. 003071305 (3D) and the Justimus tree sign
The court considered first the likelihood of confusion between the EUTM no. 000091991 (figure) and the Justimus tree sign. The court stated that the two trees are very similar and it is difficult to notice any differences between the marks. Despite the other elements in the Justimus tree (the Justimus logo and the text "Wunderboy"), the two marks are very similar.
The court considered then the likelihood of confusion between the EUTM no. 003071305 (3D) and the Justimus tree sign. The court stated that the two marks are very similar. The Justimus tree has a hole in the upper part of the tree but this element is so secondary compared to the other elements that it does not diminish the similarity between the marks.
The marks are also conceptually similar: they are referring to an evergreen tree. Furthermore, the marks have identical goods.
The court concluded that there is a likelihood of confusion between the EUTM no. 000091991 (figure), EUTM no. 003071305 (3D) and the Justimus tree sign.
3.1.4 Likelihood of confusion between the national trademark no. 109644 (figure) and the Justimus tree sign
The court considered that the two marks are very similar. However, there are some differences. The Justimus tree has slightly rounder branch tips compared to the registered national mark. The Justimus tree sign has also a text element "Wunderboy" placed inside the rectangle below the tree. Also the text elements placed inside the tree are different ("WUNDER-BAUM" vs. "AMISPOP NEVER STOP"). The court considered that the visual appearance of these text elements is, however, very similar. The texts have been placed diagonally in two lines and have a very similar font.
The court then considered the aural similarity. The registered national mark has only one text element whereas the Justimus tree sign has two. There is a minimal degree of aural similarity.
The court then moved on to assess the conceptual similarity. The marks have some similarity regarding the text elements "wunder-baum" and "wunderboy". However, the text element "amispop never stop" is diminishing the similarity. The text element is a slogan that is admiring a certain type of pop music. Both marks have a tree element and those elements are very similar. Therefore, the marks have, to some extent, a conceptual similarity.
The court then moved on to assess the distinctiveness of the registered national trademark. The court stated that the mark has a normal distinctiveness. However, the mark also has a reputation as described above and it has acquired a good distinctiveness through use.
The court concluded that there is a likelihood of confusion between the national trademark no. 109644 (figure) and the Justimus tree sign.
3.1.5 Likelihood of confusion between the established WUNDER-BAUM figure mark and the WUNDERBOY figure mark
The visual appearance of the marks is very similar. Both marks have a red arched rectangle and below the rectangle there is a black line. The tone of the color red is slightly different. The text elements have a slight difference in their wording, but the font is very similar. Therefore, there is a very high degree of visual similarity.
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| The WUNDERBOY figure mark (an attachment from the court's decision). |
The court then moved on to assess the aural similarity and referred to the assessment above (3.1.2) and stated that there is a high degree of aural similarity.
The court then moved on to assess the conceptual similarity and referred again to the assessment above (3.1.2) and stated that the marks have, to some extent, a conceptual similarity.
The court concluded that there is a likelihood of confusion between the established WUNDER-BAUM figure mark and the WUNDERBOY figure mark.
3.2 The marketing of the Wunderboy album and the song
3.2.1 The scope of protection afforded to marks with reputation
According to Article 9(1)(c) of the Community trademark Regulation No 207/2009:
Article 5(2) of the Trademarks Directive contains a similar rule. The court stated again that the Finnish Trademarks Act must be interpreted in accordance with the Trademarks Directive. Section 6 paragraph 2 of the Trademarks Act contains a rule regarding the scope of protection afforded to marks with reputation.
The court then referred to the case-law of CJ. CJ has ruled, in essence, that it is sufficient for the degree of similarity between the mark with a reputation and the other sign to have the effect that the relevant section of the public establishes a link between the sign and the mark. No likelihood of confusion is required between them on the part of the relevant section of the public (see C-408/01 Adidas Benelux, para 31).
A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
Article 5(2) of the Trademarks Directive contains a similar rule. The court stated again that the Finnish Trademarks Act must be interpreted in accordance with the Trademarks Directive. Section 6 paragraph 2 of the Trademarks Act contains a rule regarding the scope of protection afforded to marks with reputation.
The court then referred to the case-law of CJ. CJ has ruled, in essence, that it is sufficient for the degree of similarity between the mark with a reputation and the other sign to have the effect that the relevant section of the public establishes a link between the sign and the mark. No likelihood of confusion is required between them on the part of the relevant section of the public (see C-408/01 Adidas Benelux, para 31).
The existence of the link mentioned above must be assessed globally, taking into account all factors relevant to the circumstances of the case. According to C-252/07 Intel (para 42), those factors include:
- The degree of similarity between the conflicting marks, in particular visual, aural or conceptual similarity (see C-408/01 Adidas Benelux, para 28).
- the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
- the strength of the earlier mark's reputation;
- the degree of the earlier mark's distinctive character, whether inherent or acquired through use;
- the existence of the likelihood of confusion on the part of the public.¨
3.2.2 The use of signs including the word "wunderboy"
So the court had to assess first whether there is a similarity link between the conflicting marks. If such link exists, the court has to then asses whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the plaintiff's trademarks (see C-487/07 L'Oréal, paras 37-38).
The defendants have used the wunderboy word mark and also the WUNDERBOY figure mark when they have marketed the album and the song.
The court stated that based on, inter alia, the good distinctiveness of the WUNDER-BAUM word mark and the degree of similarity, the relevant section of the public establishes a link between the reputed WUNDER-BAUM word mark, the WUNDERBOY figure mark and the wunderboy word mark.
Now the court had to assess whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the plaintiff's trademarks. One of those three types of injury is enough for the rule to apply.
As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them.
CJ has ruled in its decision C-487/07 L'Oréal (paras 41, 44 and 49) that:
As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned.
In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
The defendants have used the WUNDERBOY figure mark when they have promoted their music. As mentioned above, this figure mark has a very high degree of visual similarity with the established WUNDER-BAUM figure mark. The WUNDERBOY figure mark contains a text element "wunderboy" that is similar with the WUNDER-BAUM word mark. According to the court, there is a strong association, based on the way the defendants have used the mark, between the WUNDERBOY figure mark and the reputed WUNDER-BAUM word mark. In their own Facebook page, the defendants have even promised to deliver "their own wunderbaum" to the ones who have pre-ordered the album.
According to the court, the defendants have, while using the WUNDERBOY figure mark, aimed to benefit from the distinctiveness and the reputation of the WUNDER-BAUM word mark. Therefore, the sign has taken unfair advantage of the distinctive character or the repute of the mark.
The plaintiff argued that also the use of the wunderboy word mark, as such, has taken unfair advantage of the distinctive character or the repute of the WUNDER-BAUM word mark. The court rejected this argument and stated that the use of the wunderboy word mark, as such, without any figures similar to the WUNDER-BAUM figure mark, does not establish as strong association as the WUNDERBOY figure mark does. Therefore, the wunderboy word mark has not taken unfair advantage of the distinctive character or the repute of the WUNDER-BAUM word mark.
The plaintiff argued that the use of the wunderboy word mark is, however, detrimental to the distinctive character or the repute of the WUNDER-BAUM word mark. According to the plaintiff, there is a danger that the relevant section of the public starts to understand that a text element beginning with the expression "WUNDERB" is generic for the car air fresheners. Furthermore, the defendants' song and the music video includes use of alcohol in a car and sexual innuendo involving minors and violence.
The court rejected this. The court stated that the defendants have, mainly, used the wunderboy word mark in order to promote the song and the album. This kind of use does not cause detriment to the distinctive character or the repute of the WUNDER-BAUM word mark. According to the court, the association between the marks is not strong enough.
Therefore, the use of the wunderboy word mark, as such, in order to promote the song and the album, has not infringed the WUNDER-BAUM word mark.
3.2.3 The use of the Justimus tree sign
Again, the court had to assess first whether there is a similarity link between the conflicting marks. If such link exists, the court has to then asses whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the plaintiff's trademarks.
The defendants have used the Justimus tree sign when they have marketed the album and the song.
The court referred to the assessment above (3.1.3) regarding the likelihood of confusion between the EUTM no. 000091991 (figure) and the Justimus tree sign. In that assessment it was stated that there is a high degree of similarity between the two marks.
It is true that the corresponding goods are very different. However, according to the court, the average consumer of these products (air fresheners vs. songs and albums) concerned is deemed to be reasonably well informed and reasonably observant and circumspect, and it is likely that the reputed mark of the plaintiff is known among the customers who buy music from the defendants. Therefore, the court stated that the relevant section of the public establishes a link between the reputed EUTM no. 000091991 (figure) and the Justimus tree sign.
Now the court had to assess whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EUTM no. 000091991 (figure). One of those three types of injury is enough for the rule to apply.
The court stated that since the two marks are so similar, it is obvious that the defendants have benefited from the distinctiveness and the reputation of the EUTM no. 000091991 (figure). In their own Facebook page, the defendants have even promised to deliver "their own wunderbaum" to the ones who have pre-ordered the album. Therefore, the Justimus tree sign has taken unfair advantage of the distinctive character or the repute of the EUTM no. 000091991 (figure)
The defendants have used the Justimus tree sign when they have marketed the album and the song.
The court referred to the assessment above (3.1.3) regarding the likelihood of confusion between the EUTM no. 000091991 (figure) and the Justimus tree sign. In that assessment it was stated that there is a high degree of similarity between the two marks.
It is true that the corresponding goods are very different. However, according to the court, the average consumer of these products (air fresheners vs. songs and albums) concerned is deemed to be reasonably well informed and reasonably observant and circumspect, and it is likely that the reputed mark of the plaintiff is known among the customers who buy music from the defendants. Therefore, the court stated that the relevant section of the public establishes a link between the reputed EUTM no. 000091991 (figure) and the Justimus tree sign.
Now the court had to assess whether the defendants' trademark use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EUTM no. 000091991 (figure). One of those three types of injury is enough for the rule to apply.
The court stated that since the two marks are so similar, it is obvious that the defendants have benefited from the distinctiveness and the reputation of the EUTM no. 000091991 (figure). In their own Facebook page, the defendants have even promised to deliver "their own wunderbaum" to the ones who have pre-ordered the album. Therefore, the Justimus tree sign has taken unfair advantage of the distinctive character or the repute of the EUTM no. 000091991 (figure)
3.2.4 The character dressed in a tree costume in the Wunderboy music video
Amusingly enough, the defendants' music video includes a character dressed in a tree costume. The character is dancing in the video. There is a text "WUNDER-BOY" written on the costume. The plaintiff argued that the use of this character is infringing the reputed national trademark no. 109644 (figure).
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| Like two peas in a pod? |
The court stated that the purpose of the music video is to promote the song and the album. The court continued by stating that the relevant public will associate the character with the reputed national trademark no. 109644 (figure) even though the tree costume is only roughly similar to the trademark. However, the dominant elements are the same: an evergreen tree and a text element placed diagonally in two lines. Therefore, the use of the character has taken unfair advantage of the distinctive character or the repute of the reputed national trademark no. 109644 (figure).
3.2.5 Parody argumentThe defendants did not claim that they had "due cause" to use the infringing signs. However, they argued that the use of the signs was merely a parody. They explained that the song and the music video makes fun of a certain type of young men and the use of air fresheners in the shape of an evergreen tree is a part of the lifestyle of those men.
According to the court, the use of signs, that are identical or similar to another's trademarks, in marketing or in other business, is not justifiable only because of the product promoted by the signs, for example an album or a song, includes humorous references to a phenomenon that may also have some connection with the trademarks of another.
[It is somewhat disappointing that the parody assessment is so short. Trademark parodies are quite rare and it would have been interesting to see a more profound assessment in this respect.]
[It is somewhat disappointing that the parody assessment is so short. Trademark parodies are quite rare and it would have been interesting to see a more profound assessment in this respect.]
Therefore, the defendants have infringed the trademarks of the plaintiff by using the following signs for air fresheners:
3.3 Conclusions
- the wunderboy word mark,
- the Justimus tree sign and
- the WUNDERBOY figure mark.
Furthermore, the defendants have infringed the trademarks of the plaintiff by using the following signs for the song and the album:
- the WUNDERBOY figure mark,
- the Justimus tree sign and
- the character dressed in a tree costume.
The court prohibited the defendants from proceeding with or repeating the acts.
- the character dressed in a tree costume.
The court prohibited the defendants from proceeding with or repeating the acts.
4. Compensation and Damages
According to section 38 paragraphs 2 and 3 of the Trademarks Act, any person who deliberately or due to negligence infringes the right to a trade symbol shall be obliged to pay the aggrieved party a reasonable compensation for the use of the symbol and a compensation for all the damage caused by the infringement. If the negligence has only been slight, the compensation for the damage may be adjusted. Even if no negligence is found, the infringer is obliged to pay a reasonable compensation for the use of the symbol.
4.1 Assessment
According to Government Bill 26/2006 of the Act, the reasonable compensation for the use of the symbol must be paid even if there is no financial loss for the infringed party. The amount should be calculated on the basis of a licence fee.
The plaintiff requested the court to order the defendant to pay compensation for the use of the marks, in total 50 000 euros plus legal interest. According to the plaintiff, 9 000 euros of that amount is the amount of the license fee and the remaining 41 000 euros is the amount that the defendants have otherwise benefited in the form of concerts, other albums and other merchandise.
The court had to assess first the reasonable compensation for the use of the plaintiff's trademarks. It had to determine the amount of profit that the defendants had gained from the sales of products bearing the infringing signs. The court had to then determine the amount of the license fee. After that it had to assess whether there is a reason to order the defendant to pay compensation also from the allegedly acquired benefit concerning the sales of concerts, other albums and other merchandise.
According to the defendants, 9 600 air fresheners were sold to third-party stores and the defendant profited 11 308,80 euros from that (1,178 euros per air freshener). Furthermore, 350 air fresheners were sold to the ones who had pre-ordered the album. However, the defendant provided evidence that 8 041 air fresheners of the 9 600 that were sold to the third-party stores were destroyed after the request from the defendant. The defendant argued that this should decrease the amount of profit. The court rejected this because the defendant did not claim that it had refunded any of the 11 308,80 euros paid by the third-party stores. The court stated that the defendant has profited approximately 12 000 euros from the sales of the Justimus air fresheners.
The court stated also that the defendant has profited 25 200 euros from the sales of the physical Wunderboy albums.
The court stated also that the defendant has profited approximately 5 520 euros from the sales of the digital Wunderboy products.
According to the court, the total sales were approximately 42 500 euros.
The court had to consider then whether there is a reason to order the defendant to pay compensation also from the allegedly acquired benefit concerning the sales of concerts, other albums and other merchandise. The court rejected this request as unfounded. According to the court, the plaintiff did not, inter alia, provide any concrete evidence of the alleged profit that the defendants had gained this way.
Therefore, the court ordered the defendant to pay compensation for the use of the marks, in total 6 375 euros plus legal interest.
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The plaintiff reguested the court to order the defendant to pay compensation for all the damage caused by the infringement, in total 50 000 euros plus legal interest.
The court stated that the defendant was aware of the trademarks of the plaintiff at the time when it was planning to promote the Wunderboy album and the song. Therefore, it has acted, at least, due to negligence that is not slight.
The plaintiff argued that the Justimus air fresheners have caused lost sales, in total 13 000 euros.
The plaintiff argued also that the conduct of the defendants has caused detriment to the distinctive character and the goodwill of its trademarks. The defendants' song and the music video includes use of alcohol in a car and sexual innuendo involving minors and violence.
The court stated that the conduct of the defendants has caused some lost sales. This is mainly based on the profits gained by the defendants. However, 8 041 air fresheners were destroyed and less than 3 000 air fresheners ended up to the consumers. Therefore, the court assessed that the lost profits are 3 000 euros.
The plaintiff could not provide evidence of the detriment to the distinctive character and the goodwill of the trademarks. However, the court stated that the conduct of the defendants has, to some extent, caused detriment to the trademarks. The court emphasized that the use of the infringing signs has, especially in the music video, received a large audience.
According to chapter 17 section 2 paragraph 3 of the Code of Judicial Procedure (4/1734, as amended in 2016), if credible evidence is not available regarding the amount of a claim under private
law or such evidence is obtainable only with difficulty or, in view of the nature
of the case, with unreasonable cost or difficulty, the court shall assess the amount. The court assessed that the amount is 10 000 euros.
4.2 Conclusions
The court ordered the defendant to pay compensation for the use of the marks, in total 6 375 euros plus legal interest.
Furthermore, the court ordered the defendant to pay compensation for all the damage caused by the infringement, in total 13 000 euros plus legal interest.
The court stated that there is no need to assess the requirements of unfair business practice since the court has affirmed the requests no. 3 and 5 (trademark infringement and prohibition from proceeding with or repeating the act). The plaintiff has referred to the same conduct that has been assessed above regarding the trademark infringement.
The plaintiff specified its requests and added that the court should still assess whether the use of the word "wunderboy" in the song Wunderboy can be considered as unfair business practice. Furhermore, according to the plaintiff, the court should assess whether the use of "wunderboy", as such, in order to promote the song and the album, is against unfair business practice. [The court had found earlier that the use of the wunderboy word mark, as such, in order to promote the song and the album, has not infringed the reputed WUNDER-BAUM word mark.]
The court agreed to assess this updated request.
According to section 1 paragraph 1 of the Unfair Business Practices Act (1061/1978), good business practice may not be violated nor may practices that are otherwise unfair to other entrepreneurs be used in business.
It has been ruled in the Finnish case-law that the section 1 paragraph 1 of the Unfair Business Practices Act prohibits anyone from taking undue advantage of another's goodwill (in trademarks, products, business concepts etc). This is also known as 'reputation parasitism' ('maineen norkkiminen' in Finnish).
Also according to Article 15 of the ICC Code on Advertising Practice, marketing communications should not in any way take undue advantage of another firm's, individual's or institution's goodwill in its name, brands or other intellectual property, or take advantage of the goodwill earned by other marketing campaigns without prior consent.
The court stated that there are two requirements for reputation parasitism. Firstly, the alleged victim mark of the reputation parasitism has to be well-known in the market and have a reputation. Secondly, there has to be an association between the conflicting marks and the one who has created the association is aiming to exploit the goodwill of the other mark. The court added that the reputation parasitism does not require, per se, that the conduct misleads the average consumer about the commercial origin of the product.
The court found earlier that the WUNDER-BAUM word mark has a reputation in Finland since spring 2014. Therefore it has, according to the court, the goodwill that the assessment of the reputation parasitism requires.
Now the court had to assess whether the defendants have, while using the word "wunderboy", created an association between the word "wunderboy" and the WUNDER-BAUM word mark among the reasonably well-informed and reasonably observant and circumspect average consumers.
The court assessed first the use of the word "wunderboy" in the song. The court examined the lyrics of the song and stated that the word is clearly referring to a young man who is a member of this certain subculture. The court considered that the word is not, as such, referring to the WUNDER-BAUM word mark or to the products of the plaintiff. Therefore, there is no reputation parasitism in this regard.
The court assessed then the use of the word "wunderboy" in the promotion of the song and the album. The court admitted that the use of the word "wunderboy" can create an association between the word and the WUNDER-BAUM word mark and the air fresheners sold by the word mark. However, taking into account, inter alia, the meaning that the word "wunderboy" has in the song, this association is considered to be very weak. Therefore, there is no reputation parasitism in this regard either.
6. Verdict
1. The court affirmed that the following trademarks have a reputation in Finland for Air fresheners since spring 2014:
1. The court affirmed that the following trademarks have a reputation in Finland for Air fresheners since spring 2014:
- EUTM no. 004444791 WUNDER-BAUM (word),
- EUTM no. 000091991 (figure),
- EUTM no. 003071305 (3D),
- national trademark no. 109644 (figure) and
- the figure mark represented in the EUTM application no. 012525507.
2. The court affirmed that the separate WUNDER-BAUM figure mark has become established through use since spring 2014.
3. The court affirmed that the defendants have infringed the trademarks described above when they have marketed and sold the air fresheners.
4. The court affirmed that the defendants have infringed the reputed trademarks described above when they have marketed and sold the song and the album.
5. The court prohibited the defendants from proceeding with or repeating the act described in 3-4.
6. The court ordered the defendant to pay reasonable compensation for the use of the marks, in total 6 375 euros plus legal interest.
7. The court ordered the defendant to pay compensation for all the damage caused by the infringement, in total 13 000 euros plus legal interest.
8. The court ordered the defendant to pay the plaintiff's legal fees, in total 52 000 euros plus legal interest.
7. The court ordered the defendant to pay compensation for all the damage caused by the infringement, in total 13 000 euros plus legal interest.
8. The court ordered the defendant to pay the plaintiff's legal fees, in total 52 000 euros plus legal interest.
9. The court dismissed the other requests.
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