Likelihood of Confusion in Finland Under Section 13: Similarity, Goods, Dominant Elements

Relative grounds are one of the most common reasons trademark applications face difficulty in Finland. Even a highly distinctive mark can be refused if it conflicts with an earlier right. Under Section 13 of the Trademarks Act 544/2019, PRH examines whether the applied-for sign is identical or similar to an earlier mark and whether the goods or services are identical, similar, or in some cases sufficiently connected to create unfair advantage or detriment. For applicants, the practical challenge is that this is a global appreciation test: similarity of marks, strength of earlier rights, overlap of goods, and the dominant elements of combined marks all interact. A superficial side-by-side comparison is not enough.

The Legal Framework: Trademarks Act 544/2019, Section 13

• Section 13(1): A trademark may not be registered if it is identical to an earlier trademark protected in Finland for identical goods or services.
• Section 13(2): A trademark may not be registered if, because of its identity or similarity to an earlier trademark and the identity or similarity of the goods or services, there is a likelihood of confusion on the part of the public.
• Section 13(3): A trademark may not be registered if it is identical or similar to an earlier mark with a reputation and would take unfair advantage of, or be detrimental to, that earlier mark’s distinctive character or reputation.
• Section 13(4): Earlier trade names and secondary business identifiers may also form a basis for refusal where conflict exists.
• Section 13(7): A mark may be refused where it gives the impression of being the name or likeness of another person, relevant to identity-based conflicts.
• Section 13(8): Agent or representative filings without the proprietor’s consent are addressed as a relative rights problem.
• Section 17: Goods and services are classified under the Nice Classification, but class numbers alone do not determine similarity.
• Section 49: In opposition and later proceedings, proof of genuine use of the earlier mark may be required where the earlier registration is old enough.

The Likelihood of Confusion Test in Finland

Finland applies the standard average-consumer test familiar from EU trademark law. The question is whether the relevant public may believe that the goods or services come from the same undertaking or from economically linked undertakings. Confusion can be direct, where consumers mistake one mark for the other, or indirect, where they assume a licensing, sub-brand, or line-extension relationship.

The assessment is global. PRH does not apply a mechanical checklist in which one factor alone decides the outcome. Instead, it balances mark similarity, goods and services similarity, distinctiveness of the earlier mark, and the overall impression created by the signs. Stronger earlier marks generally enjoy broader protection. The more similar the goods, the less similarity between the marks may be needed to produce confusion, and vice versa.

This means applicants cannot safely rely on small spelling changes or graphic differences if the commercial context is close. Nor can they assume that different Nice classes eliminate risk. Goods may be considered similar even across classes if they are complementary, compete with one another, travel through the same channels, or target the same consumers.

What the Finnish Patent and Registration Office Considers in Confusion Analysis

PRH examines similarity from several angles and places significant emphasis on the dominant and distinctive elements of each sign.

Visual similarity

For word marks, visual comparison includes length, structure, initial letters, endings, repeated sequences, and overall word shape. Shared prefixes or unusual internal sequences can matter greatly, especially where the differing portions are weak or descriptive. Minor spelling variations, doubled letters, or letter substitutions may not be enough if the overall look remains close.

For figurative and combined marks, visual comparison also addresses layout, color, shape, and graphic concept. But if both marks contain words, the verbal elements often dominate because consumers use words to ask for products and remember brands.

Phonetic similarity

PRH considers how Finnish consumers are likely to pronounce the marks. Exact phonetic identity is unnecessary. Similar rhythms, syllable structures, and stressed segments can support confusion, particularly for orally purchased goods or recommendations made by phone, in stores, or by word of mouth. Foreign words are evaluated based on likely Finnish pronunciation unless a different pronunciation is obvious to the relevant public.

Conceptual similarity

If the marks have meanings understood by the relevant public, shared concept can increase confusion. A word mark and a figurative mark may be conceptually similar if the image clearly represents the same idea. This matters particularly where visual and phonetic similarity are weaker but the semantic overlap is strong.

Goods and services similarity

PRH does not stop at class numbers. It considers whether the goods are identical, complementary, competitive, distributed together, or directed to the same public. Retail services may be similar to the goods sold through them in some contexts. Services involving installation, repair, software, and hardware can also create relatedness. The applicant should therefore review the commercial realities of the cited earlier registration, not just its formal class position.

Dominant elements in combined marks

Where marks contain both words and devices, PRH identifies what consumers will treat as dominant. If the word element is prominent, the comparison often turns largely on that wording. A common mistake is to assume that adding a different logo avoids conflict with an earlier word mark. If the words are identical or highly similar and the goods overlap, graphic differences may carry limited weight.

Conversely, where a distinctive figurative element clearly dominates and the shared verbal element is weak or descriptive, the design may reduce confusion. But this depends on the actual presentation and on whether consumers are likely to refer to the mark by the word or by the image.

Weak and descriptive elements

Weak, descriptive, or generic elements usually receive less weight. In practice, this means the comparison often centers on the distinctive core of each mark. Finland has no formal disclaimer practice in the way some jurisdictions do, but examiner analysis informally discounts descriptive matter. Applicants should therefore focus on whether the distinctive parts still collide.

Reputation cases

Under Section 13(3), an earlier mark with a reputation can block later marks even for dissimilar goods if use of the later sign would take unfair advantage of, or harm, the earlier mark’s distinctive character or reputation. This widens the risk profile for brands approaching famous Finnish or EU marks.

Key Case Law

MAO 211/2023 [2023] — The Market Court emphasized dominant-element analysis in a combined mark context, noting that the more prominent verbal element can govern overall impression. Although the decision arose in a distinctiveness setting, its reasoning is directly relevant to confusion analysis because the same principle applies when comparing composite marks.

Berggren v. Palmroth [Helsinki Court of Appeal, 2007] — This case addressed personal name use and the own-name principle. It is relevant to relative-rights analysis because Section 13 also protects against marks that wrongfully appropriate personal identity or create misleading associations.

No leading Finnish cases have been published in the source guide setting out a separate domestic formula for visual, phonetic, and conceptual comparison beyond the statutory likelihood-of-confusion test and EU-aligned practice. Where no further verified Finnish authority is provided, no leading cases have been published.

The Procedure for Responding to a Relative-Ground Refusal

When PRH cites an earlier right under Section 13, the response should be structured around both the marks and the goods.

First, verify the earlier right. Confirm ownership, status, filing or priority date, and exact specification. Sometimes the practical scope of the earlier registration is narrower than the initial objection suggests.

Second, compare the goods and services realistically. If overlap is limited, amend the specification to carve out the problem area. Strategic narrowing is often one of the most effective ways to reduce confusion risk.

Third, analyze the marks by visual, phonetic, and conceptual criteria, giving proper weight to distinctive and dominant elements. The response should explain why consumers would not view the common element as source-indicating, if that is the case.

Fourth, if the earlier mark contains weak or descriptive components, emphasize that protection should focus on the distinctive core, not on shared non-distinctive matter.

Fifth, in opposition or later invalidation proceedings, consider requiring proof of genuine use under Section 49 where the earlier mark is old enough and the procedural posture permits. An unused earlier mark may not support the full claim.

Sixth, consider coexistence or consent where commercially appropriate. While PRH is not bound to accept private arrangements in every case, they may assist in resolving a dispute depending on the nature of the objection and the degree of marketplace separation.

Seventh, file a full written response within the applicable deadline. Finland’s process is evidence-driven and does not reward informal assertions that the marks simply feel different.

Strategic Recommendations

• Recommendation: Conduct clearance searches for both identical and similar marks before filing. Include word, phonetic, and conceptual variants, not just exact matches.
• Recommendation: Evaluate goods and services overlap commercially, not only by class. Related markets can still create refusal risk.
• Recommendation: In composite branding, assume the verbal element may dominate unless the design is clearly the main badge of origin.
• Recommendation: Avoid brand structures that append weak descriptors to a third party’s distinctive core. Small additions often do not eliminate confusion.
• Recommendation: Preserve evidence of use for your own earlier rights. In Finland, established or reputed rights can significantly strengthen an opposition position.
• Recommendation: Consider filing alternative marks. If a house mark is strong but a product descriptor is weak, a two-track filing strategy may reduce enforcement and prosecution risk.

Common Mistakes

• Mistake: Assuming different logos eliminate conflict between similar word elements. PRH often gives substantial weight to the verbal portion of a combined mark.
• Mistake: Relying on different Nice classes as a complete defense. Goods and services may still be considered similar in market reality.
• Mistake: Focusing only on visual differences and ignoring phonetic or conceptual similarity. Confusion analysis is cumulative.
• Mistake: Overestimating the significance of descriptive additions such as geographic or quality terms. Weak matter usually does little to distinguish marks.
• Mistake: Failing to assess reputation risk under Section 13(3). Famous earlier marks can block use beyond closely related goods.

Key takeaway: Under Section 13, Finnish confusion analysis is a global assessment that weighs mark similarity, goods similarity, and the dominant distinctive elements of each sign. Small differences rarely save a mark where the commercial context and the core source-indicating elements are too close.