Länsförsäkringar, Länsförsäkringar, bork, bork, bork!

Wooden house in snow. Unrelated to Matek.

Länsförsäkringar is a Swedish insurance group that also operates a bank (Länsförsäkringar Bank). On 4 January 2008 it registered a device as EU mark among others for building construction, repair and maintenance, and installation services in Nice class 37. The mark was subsequently not used for these services.

Matek A/S is an Estonian company whose principal activity consists in manufacturing and assembling wooden houses (it does not get much more Swedish than that. Except that the houses could be for self-assembly). Matek started using in 2007, and secured registration as a mark in 2009, a very similar device to the Länsförsäkringar device for building materials in Nice class 19 (if you want to see how similar the devices are, check the IPKat post on the referal).

In a battle between the most Swedish name against the most Swedish activity, Länsförsäkringar sought to enjoin Matek from using its device, and was successful in first instance. However, on appeal the Svea hovrätt (Svea Court of Appeal, Sweden) set that decision aside. Whilst the appellate court considered that the logo used by Matek was similar to the EU trade mark registered by Länsförsäkringar, it held in contrast to the Stockholms tingsrätt (Stockholm District Court) that the examination of the similarity of the goods and services at issue had to be carried out on the basis not of the formal registration of that mark, but of the activity actually carried out by the proprietor (mind you, Länsförsäkringar's mark at that time was still within the 5-year grace period for use of Article 15(1) EU Trade Mark Regulation), and that led to the conclusion that the services and goods were dissimilar.

Länsförsäkringar's CEO

Länsförsäkringar appealed to the Högsta domstolen (Highest Damn Stool, Sweden), submitting that the assessment of the likelihood of confusion, within the meaning of Article 9(1)(b) of Regulation No 207/2009, must be based, during the period of five years following registration of an EU trade mark, solely on that registration and not on the actual use of the mark. The Supreme Court thought it necessary to ask the CJEU whether this view was correct (yes it is).

The CJEU, in a judgment handed down shortly before Christmas on 21 December 2016, held that indeed, during the five year grace period for use after registration of a EU mark, the likelihood of confusion has to be assessed based on the goods for which the mark is registered, not the goods it is actually used for. In view of Article 15(1)  and Article 51 EU Trade Mark Regulation, this is really the only correct answer, as David Brophy and the sole commenter H Lee already noted in the IPKat post on the referal.

I would even argue that this is a (rare) case of "acte clair", i.e. the correct application of EU law is so obvious as to leave no scope for any reasonable doubt as to the manner in which the question raised is to be resolved, which makes a referal under Article 267(3) TFEU unnecessary (EU:C:1982:335 - CILFIT).

Anybody who thinks I've tried to mention Länsförsäkringar as often as possible in this post would be correct.