The Market Court of Finland, in its recent decision, MAO: 198/13, rendered on May 7, 2013, ruled that a packaging of the plaintiff was not sufficiently known to the relevant audience to justify cease and desist order against the defendant using potentially confusingly similar packaging for their products, based on the Unfair Business Practices Act (1061/81). In the case, the plaintiff sought an injunction on the grounds that its competitor had entered the market with product packaging using shapes and colors that are confusingly similar to the shapes and colors used by the plaintiff.

The Unfair Business Practices Act has been construed to grant protection to brand elements, such as product packaging, not necessarily protected or protectable under trademark law. The qualifying brand elements are protected against slavish imitation and inappropriate exploitation of the goodwill associated with the brand element. To qualify for the protection the brand element has to be, among other things, identifiable and known to the public.

In its ruling the Market Court concentrated on assessing if the plaintiff's product packaging was sufficiently known to the relevant audience. The assessment provides insight into which conditions must be met for a packaging or product design to enjoy protection against slavish imitation or the use of the goodwill vested in such packaging or product design. Further, the ruling outlines how the Market Court assesses evidence relevant for this question.

The Market Court began its assessment by confirming that the plaintiff must prove that its brand elements are known by the relevant audience. The Market Court continued with a statement that it was specifically important if the brand elements were known at the latest at the time the products with allegedly similar elements entered the market.

After the initial statements the Market Court assessed the evidence presented by the plaintiff. The Market Court held that:

  • Results of foreign market studies do not provide evidence on whether a brand element is known in Finland.
  • Results of a market study only referred to by witnesses but not presented to the Market Court do not demonstrate that the brand elements are known as the premises of such studies are not subject to scrutiny of the Market Court or the defendant.
  • High market share of a product does not prove that the brand elements used in the packaging of the product are known. High market share may be relevant together with other supporting evidence.
  • Investments into the marketing of a product or building of a brand do not show that the brand elements would be known to the target audience.

The Market Court went on to conclude that the plaintiff had failed to prove that its brand elements were known to the target audience. Consequently, it was not necessary for the Market Court to assess if the brand elements in the product packaging of the plaintiff and the defendant were confusingly similar or not. The application for cease and desist order was rejected and the plaintiff was ordered to pay the legal costs of the defendant.

The plaintiff has applied for a leave to appeal the decision from the Supreme Court. A ruling of the Supreme Court on the leave to appeal is expected within the next 12 months.

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