IICJ Paper Battle for a Reputed Brand, Legitimate Competition or Free-Riding? Teresa Laimio, Senior Legal Counsel, Valio Ltd, Finland

This article is a case study of a long-running trademark dispute between the two leading dairy companies in Finland, focusing on the protection of a trademark with a reputation. Initially, Valio Oy (Valio) alleged that Arla Ingman Oy Ab (Arla Ingman) had committed trademark infringement of Valio’s well-known trademarks VOIMARIINI®, OIVARIINI® and MARIINI® through Arla Ingman’s use of the trademark INGMARIINI for identical spreadable fat products. In addition to the proceeding in the district court, Valio opposed Arla Ingman’s trademark application INGMARIINI in the Finnish National Board of Patents and Registration. Both of these proceedings led, through appeal, to final rulings by the Finnish Supreme Court (KKO 2010:12) and the Supreme Administrative Court (KHO 421/2/09). The Supreme Court held that Valio’s trademarks VOIMARIINI® and OIVARIINI® are trademarks with a reputation in Finland. However, INGMARIINI was not deemed to be confusingly similar to Valio’s trademarks and the use of INGMARIINI was not regarded to take unfair advantage of Valio’s reputed trademarks. A year later, the Supreme Administrative Court took the opposite view and held that even though the trademarks were not confusingly similar as such, INGMARIINI did benefit from the reputation of the earlier VOIMARIINI® trademark, with the result that the INGMARIINI trademark did not fulfil the registration requirements of the Finnish Trademark Act. The effects of the different rulings of the two high courts are evident as INGMARIINI is not allowed to be registered as a trademark and yet Valio may not prevent Arla Ingman from using the INGMARIINI name to distinguish its products. The rulings did not only spark off debate among Finnish academics and trademark lawyers but also justified the need for a special IP court that is planned to be established in Finland in the near future.
Author
Teresa Laimio
Teresa Laimio is a Senior Legal Counsel of Valio Ltd and has worked in-house for more than 10 years with a particular focus on IP matters. She has a broad experince in international patent and trademark licensing, technology transfer, complicated IP disputes and legal advice related to brand strategy, brand advertising and sponsorship. Prior to joining Valio Ltd at 2002 she worked in-house at IT and insurance sector. Teresa is a postgraduate student in IP and commercial law at the University of Helsinki, Finland.
Company
Valio Ltd
Valio Ltd is the biggest milk processor in Finland by net turnover at 1.9 billion euros. Valio is the market leader in all key dairy product groups in Finland and a world class pioneer as the developer of functional foods. Valio is the leading brand in Finland and strongly positioned in neighbouring countries Russia, Sweden and the Baltic States with subsidiaries in the USA and China, too. Valio has 15 production plants in Finland, two in Estonia, and a Customer Service Center including production facilities in Moscow. Valio also commands global sales in food ingredients. International operations including licensing encompass 65 countries accounting for one third of turnover.
Country
Finland More
Area of Law
Competition More
Business Sector
Agriculture More
Month Published
May 2013 More
Edition
Vol. 6, No. 23, Spring 2013 More
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