Summary: The Market Court prohibited a distributor from using
marks confusingly similar to registered trademarks of former
principle based on unfair business practices act.
The defendant had acted as a distributor for the plaintiff's
kitchens for over ten years using a mark
"Keittiömaailma" (which roughly translates to
"Kitchen World"). While acting as a distributor the
defendant had registered a domain name
"keittiomaailma.com" in May 2000. Since its registration
the defendant has used the domain in distributing and selling the
The plaintiff used the mark "Keittiömaailma" to
sell its kitchen through the defendant and other distribution
channels. The plaintiff started protecting its rights in the mark
"Keittiömaailma" in 2002 and since then has
registered a trademark "Keittiömaailma" and several
auxiliary business names containing the work
"Keittiömaailma". The plaintiff also registered in
its name the domain name "keittiomaailma.fi".
The defendant terminated the distributorship in February 2011
and continued using its domain "kettiomaailma.com" to
sell products competing with the products the defendant had sold
and distributed for the plaintiff. Among other things the defendant
directed enquiries to the "keittiomaailma.com" to the
website of a competing provider of kitchens.
Findings at the Market Court
The plaintiff filed for an injunction at the Market Court to
stop the defendant from using the mark
"Keittiömaailma" after the distributorship had
terminated. The claim for injunction was based on the argument that
the use of the mark in the .fi domain name and otherwise in
relation to defendant's business constituted unfair business
practice because its aim was to unjustly exploit the goodwill
associated with the plaintiff's marks and it caused confusion
between the products of the plaintiff and its competitors.
The Market Court concluded that the continued use of the
"keittiomaailma.com" domain name as www- and e-mail
addresses had created the impression that the defendant continues
to be associated with the plaintiff and the other distributors
selling plaintiff's products. The Market Court concluded that
in doing so the defendant's aim was to unjustly take advantage
of the goodwill associated with plaintiff's products and marks.
Consequently, the defendant's actions were construed to
constitute an unfair business practice.
The decision of the Market Court further concludes that the way
the defendant used the domain name "keittiomaailma.com"
to direct traffic to other web-sites selling kitchen provided by
other vendors was prone to cause confusion as to the origin of the
products. The use of marks in a way that resulted in a likelihood
of confusion also amounted to an unfair business practice.
Further the Market Court concluded that as the parties were
engaged in the same area of business the use of the marks
associated with the plaintiff by the defendant affected competition
in the market. Consequently, the Market Court confirmed that the
continued use of marks containing the word
"Keittiömaailma" or the domain name
"keittiomaailma.com" constituted unfair business
practices and granted the injunction.
Implications for the producers and
The case and Market Courts decision highlight the need for both
the distributor and manufacturer to agree on the ownership and use
of marks associated with the distributorship at the beginning or
during their relationship. The manufacturers cannot necessarily
rely on the fact that the Market Court decided the matter described
above in favor of the manufacturer. The conclusions of the Market
Court seem to be strongly based on the facts of the case and do not
necessarily provide guidance on situations with different set of
facts. Through addressing the question in their agreement or other
documentation the parties can allocate costs, risks and rewards in
a predictable way and avoid the uncertainties of the
post-termination effects of a distribution agreement.
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guide to the subject matter. Specialist advice should be sought
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Assos v Asos is a good example of how two apparently very similar trade marks can be held to co-exist side by side despite appearing to inhabit similar territory, and how it can be dangerous to adopt too simplistic a view of infringement and passing off. It is not enough to simply say "the marks are similar and what they are being used for is similar –therefore there must always be infringement".
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