The Supreme Administrative Court ruled that NETTIVENE was not distinctive enough to be registered in some goods and services trademark categories

A company called NettiX Oy applied to the Finnish Patent and Registration office (PRH) to register an internet based service portal named NETTIVENE  (English: INTERNET-BOAT) as a trademark in several goods and services categories. The Finnish Patent and Registration Office had accepted the application only partially while dismissing the application in the category 9 of goods trademarks and categories 35 and 42 of service trademarks. The Patent and Registration Office argued, that in categories 9, 35 and 42 the portal name NETTIVENE had not been used extensively nor long enough for it to have developed into a distinctive element to be associated specifically with the applicant company in question. Following an appeal, the Market Court handled the case.

For the most part, Market Court dismissed the appeal and agreed with the original decision made by the Patent and Registration Office. However, in the services trademarks category 35 and subcategories “advertisement, advertisement space rental services and online advertisement space services” the Market Court overruled the trademark decision that had been made by the Patent and Registration Office and reverted the matter to be handled again in the PRH stating, that in the above specified advertisement services category the service portal name NETTIVENE was distinctive enough to be registered as a trademark according to the Finnish Act on Trademarks (1964/7) as in force. After this ruling by the Market Court, the case was yet appealed to the Supreme Administrative Court which gave its decision (KHO: 2016:82) on the 30th of May 2016.

The company NettiX Oy requested that the entire modified trademark application was to be accepted in the trademark categories 9, 35 and 42. To support this claim, the company stated that NETTIVENE service portal was a part of larger family of different types of internet-based service portals maintained by the company all of which start with the prefix NETTI. So judicially, the trademark NETTIVENE would be a part of a known trademark family, a character which in itself adds to the distinctiveness of NETTIVENE -service portal. The company also pointed out that earlier the Patent and Registration Office had accepted the trademark applications for other service portals with the NETTI-prefix. The company also appealed to the T-301/09 CITIGATE-judgement by the ECJ to support the legal significance of belonging to a trademark family.

The Supreme Administrative Court dismissed the appeal made of the Market Court’s ruling on the matter. The reasoning behind the Supreme Administrative Court’s decision focused on analyzing the distinctive character of NETTIVENE -service portal name in the categories that the updated trademark application concerned. The Supreme Administrative Court emphasized that the lack of distinctiveness is an unconditional impediment for registering a trademark, thus belonging to a trademark family cannot substitute for the lack of independent distinctiveness. In addition, it can be concluded from the precedents of the ECJ that when analyzing the distinctiveness of a single trademark and the significance of belonging to a trademark family, the distinctiveness of the conjunctive part within the trademark family is central.  In this case, the conjunctive part of the supposed trademark family is the word “NETTI” which is a descriptive word, a common abbreviation for the word internet, and not distinctive in itself.

 

KHO 2016:82 (in Finnish): http://kho.fi/fi/index/paatoksia/vuosikirjapaatokset/vuosikirjapaatos/1464254970530.html