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Similarity between Goods and Services in Different Classes in Finland and the EUIPO

Aug 14, 2020

Table of contents
    Jenni Ihalainen

    The Supreme Administrative Court of Finland considered in its decision of 20 July 2020 (KHO:2020:89) that there was a risk of confusion between the mark NFC FIGHT NIGHT (figurative) and an earlier mark UFC FIGHT NIGHT, even though the former concerned goods in class 25, and the latter services in class 41.   


    The Supreme Administrative Court’s recent decision and a preceding decision of the Market Court (no. 520/19) which was decided on 9 December 2019 both reveal that when comparing the similarity of goods and services covered by trademarks, goods and services can be considered at least weakly similar, if the purpose of use of those goods and services are considered to be closely related to each other, and when consumers may perceive that the goods and services are provided by the same party.  


    Factual and Legal Background 


    The present case involved a trademark which was applied for in Finland for NFC FIGHT NIGHT (figurative, see below) and an earlier EU trademark No. 12068731 UFC FIGHT NIGHT (word). 


    The red figurative mark NFC FIGHT NIGHT was applied for in class 25 for the goods Martial arts uniforms; Sportswear [except golf gloves]”.   The owner of the EU trademark UFC FIGHT NIGHT, Zuffa, LLC, (“Zuffa”) opposed the mark. The opponent’s mark was registered in class 41 for services including “Entertainment services, namely, arranging and conducting mixed martial arts competitions and events”, among others. 

    The Finnish Patent and Registration Office (“PRH”) noted that the trademark NFC FIGHT NIGHT (figurative) did not cover same or similar goods in class 25 when compared to the services of the opponent’s EU trademark UFC FIGHT NIGHT in class 41 and therefore rejected the opposition. 


    Zuffa lodged an appeal with the Finnish Market Court, which overturned the decision of the PRH and determined that there was a risk of confusion between the mark NFC FIGHT NIGHT (figurative) and the earlier trademark UFC FIGHT NIGHT. The Market Court considered the goods and services in question to be at least weakly similar and the compared marks to be very similar. 


    The PRH appealed the Market Court’s decision to the Finnish Supreme Administrative Court.  In its appeal it considered that the Market Court’s decision would significantly change the practice concerning risk of confusion.  According to the PRH, the overall policy has been that goods in class 25 and services in class 41 are not considered similar.  The PRH justified its position by noting, inter alia, that the mere connection between goods and services is not sufficient, and that clothes, accessories and entertainment services are not similar by nature, do not have the same purpose and manner of use, and do not compete with or complement each other, amongst other things. 


    Decision of Finland´s Supreme Administrative Court 


    However, the Supreme Administrative Court rejected the PRH’s appeal and with its decision confirmed the Market Court’s interpretation, namely that the goods and services covered by the trademarks in question were at least weakly similar.  In particular, the martial arts uniforms covered by the trademark NFC FIGHT NIGHT (figurative) were considered to be used, inter alia, at events organized under the trademark UFC FIGHT NIGHT, in a way that the target public may perceive those goods and services as coming from the same company, or from economically connected companies, considering the similarity of the trademarks. Thus, based on the overall assessment, a risk of confusion existed between the compared trademarks. 


    Comparison with EUIPO 


    This decision is a nice reminder that, in some situations, goods and services may be considered to be at least weakly similar even if there may be no or very few earlier cases finding such similarity.   


    For example, the Court of Justice of the European Union seems to have never assessed the similarity of goods in class 25 and services in class 41.  In the EUIPO there have been some cases, and in majority of those the goods and services have been found to be dissimilar (e.g., see EUIPO Boards of Appeal, R-1832/2018-4, § 16, appealed to GC on 6 December 2019). However, there are also at least a few cases where such a close link was found between, for example, sports related clothing and certain sport and entertainment related services such that a low degree of similarity existed (e.g. Boards of Appeal, R 887/2018-2, § 38-39).  




    It remains to be seen the extent to which this decision influences the interpretation policy of the PRH in the future particularly since these types of cases are typically very fact-specific.  Even so, it is likely that in similar situations interference with a later mark is likely to be left to the parties in an opposition. In other words, the proprietor of the earlier mark likely will have to oppose a later mark if it considers that the mark directed to certain goods would create a risk of confusion with the earlier mark protected for services, or vice versa. 


    In addition to assessing the similarity of goods and services, the case is also interesting in that the appellant was the PRH, not the trademark owner.  Since entry into force of the new Trademark Act on 1 May 2019, the PRH has been using it´s right to appeal Market Court decisions to the Supreme Administrative Court.  In particular, the PRH has sought guidance from the Supreme Administrative Court's position in situations where there is little case law and a need for clarity. 

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