The Appeal Succeeded in the Market Court – Likelihood of Confusion Between ICEPEAK and ICESHOE -marks

Properta successfully represented L-Fashion Group Oy (Luhta) in an appeal case before the Finnish Market Court (MAO:285/2024, not yet legally binding). The administrative trademark opposition case involved defending the rights related to ICEPEAK-trademarks.

Luhta opposed the registration of the ICESHOE figurative trademark in Finland, arguing that the applied trademark will cause likelihood of confusion with their previously registered ICEPEAK word and figurative trademarks. The marks under consideration included similar footwear belonging to trademark class 25. It was also argued that the earlier ICEPEAK trademarks had acquired enhanced distinctiveness through use.

Although the Finnish Patent and Registration Office (PRH) initially acknowledged the enhanced distinctiveness of the ICEPEAK trademarks, it concluded that there was no likelihood of confusion between the marks and dismissed the opposition. However, the Market Court overturned this decision and remanded the matter for the cancellation of the ICESHOE registration. The court found that the ICEPEAK trademarks were inherently distinctive and had also acquired enhanced distinctiveness through use, thus warranting broader protection.

The court also considered that the average consumer generally pays more attention to the beginning of a trademark than to its end and typically has an imperfect recollection of the trademark, meaning the differences between the marks were not sufficient to eliminate the risk of confusion. Additionally, the court assessed several other factors, such as the descriptiveness of the word “shoe” in the opposed mark for footwear.

The Market Court’s decision aligns with established EU case law (e.g., C-39/97 Canon and C-342/97 Lloyd Schuhfabrik Meyer) and also follows the trademark law principle that significant similarity between goods can offset lesser similarity between the trademarks intended for them, and vice versa. The actual significance of enhanced distinctiveness through use is also a factor in the overall assessment of the risk of confusion. The decision emphasises that a trademark owner should invest in demonstrating the enhanced distinctiveness of their mark through use.