Logo marks – not always a shortcut to success
Compared to trade marks only containing word elements, logo marks generally have better chances of being granted protection in Finland. This is because the inclusion of figurative elements tends to increase the distinctive character of a trade mark. That said, businesses should not harbour the misbelief that filing a trade mark in logo form will guarantee success. A recent ruling of the Finnish Market Court demonstrates that this is not the case.
In the case at hand, the Finnish Patent and Registration Office rejected an application for the Finnish designation of the international figurative trade mark as shown below; consisting of the words “THE GOOD CIDER OF SAN SEBASTIAN Since 1918” within a simple diamond shape. Registration was sought for “ciders” in class 33.
According to the Market Court, the word elements of the international registration indicate that the products are good ciders that originate from a place called San Sebastian and have been manufactured since 1918. It was considered that the average Finnish consumer would understand this message. The mark was therefore not capable of distinguishing the appellant’s goods from other goods on the market. The relatively simple and ordinary figurative black diamond element was not regarded sufficient to make the mark distinctive as a whole.
It was on these grounds that the Market Court rejected the applicant’s appeal and upheld the decision of the Patent and Registration Office.
The ruling may hardly be considered surprising, with the Market Court having made similar assessments in previous years. Nevertheless, the case serves as a good reminder that even logo marks can sometimes be refused protection based on non-distinctiveness.
Further considerations when seeking to register figurative marks
In addition to the above, there are several other factors that need to be kept in mind when protecting a figurative trade mark. Firstly, it is worth noting that the new Finnish Trade Marks Act, which entered into force on 1 May 2019, changed the way that different colour variations of the same logo are protected in Finland. Due to the legal reform, a new trade mark registration in black and white is no longer considered to cover its different colour variations.
In other words, this means that you only get what you apply for. Therefore, it is important to apply for a trade mark in the colours for which use is envisaged. It may therefore be sensible to apply for a black and white version in addition to colour variations. This is to ensure protection against a competitor using a black and white version of a similar mark as a colourless logo may not be seen to cause confusion with a logo registered in a specific colour.
In spite of the reform, the number of trade marks applied for in colour has not significantly increased in Finland – yet. We will be keeping a close eye on any developments to see if the trend will shift in the future.
Secondly, it should be noted that a new registration may be required if the logo is updated. Minor updates, such as small changes in the font, layout or colour tone, may however sometimes be acceptable from a proof of use point of view, provided that the mark’s distinctive character remains unchanged. However, if significant changes are made such that the registered mark no longer corresponds to the actual logo that is being used, the registered mark may be vulnerable to revocation attack for non-use.
All in all, there are multiple aspects to be mindful of when seeking protection for a logo. Sure, in some aspects, figurative marks may be more favorable to the applicant, but even logos come with certain risks. This is something for businesses to keep in mind when considering their trade mark protection strategies.
