Battle for a Reputed Brand, Legitimate Competition or Free-Riding?

Abstract

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.