When a Descriptive Trademark Comes at a Cost: The SÄHKÖMESSUT Case

The Finnish Market Court found that extensive recognition among industry professionals was not enough to establish acquired distinctiveness for all the services covered by the registration. In an unusual twist, the Court also ordered the Finnish Patent and Registration Office (PRH) to reimburse EUR 10,000 of the opponent’s legal costs after finding that the Office had incorrectly defined the relevant public. 

The decision (MAO:333/2026) has been appealed to the Supreme Administrative Court. 

Longstanding use of a descriptive mark

Jyväskylän Messut Oy had registered the word mark SÄHKÖMESSUT, which translates to “ELECTRICITY FAIR”, for a broad range of goods and services relating to fairs, exhibitions, conferences and other events. 

The mark had been used for an electrical industry trade fair since the 1990s, with the event generally attracting around 10,000 to 20,000 visitors.  

Suomen Messut Oyj opposed the registration, arguing that SÄHKÖMESSUT directly described an electrical industry fair and therefore lacked inherent distinctiveness. 

PRH agreed that the mark was inherently non-distinctive but considered that it had acquired distinctiveness through longstanding and extensive use. According to PRH, the relevant public consisted of electrical industry professionals, among whom the mark was recognised as identifying Jyväskylän Messut Oy’s event and services. PRH therefore rejected the opposition. 

The relevant public is determined by the scope of protection

The Market Court disagreed with PRH’s approach. 

The relevant public must be determined on the basis of the goods and services covered by the registration, not merely by looking at the customers to whom the trademark owner actually offers its services. 

The SÄHKÖMESSUT registration was not limited to electrical industry events or services aimed at professionals. Some of the covered services could also be offered to the general public. For those services, acquired distinctiveness therefore had to be established among both industry professionals and ordinary consumers.

Recognition is not the same as trademark distinctiveness

The trademark owner submitted extensive evidence, including a recognition survey, 45 declarations concerning acquired distinctiveness, social media material and online and print articles. 

In the survey, 93% of electrical industry professionals said that they were familiar with the Sähkömessut event. Despite this impressive figure, the Market Court gave the survey only limited evidential weight. 

The problem was the way the survey had been designed. The answers demonstrated recognition of the event but did not establish whether respondents perceived SÄHKÖMESSUT as an indication of commercial origin, which is the essential function of a trademark. Moreover, much of the evidence concerned industry professionals rather than the general public. 

The Market Court therefore found that acquired distinctiveness had not been established for services that could also be directed at ordinary consumers. The registration nevertheless remained valid for certain services for which the mark was inherently distinctive and for certain professional services for which acquired distinctiveness had been sufficiently demonstrated.  

An unusual costs award against PRH

Perhaps the most unusual aspect of the decision concerned legal costs. 

The Market Court found that PRH had defined the relevant public contrary to established case law. This was not merely a situation where the Court reached a different conclusion when assessing difficult evidence. PRH’s assessment had proceeded from an incorrect legal starting point, which had also affected its assessment of the evidence and resulted in its decision being partially overturned.  

The Court considered it unreasonable for Suomen Messut Oyj to bear all of its own legal costs in these circumstances. It therefore ordered PRH to reimburse 10,000 EUR of the opponent’s legal costs, including the Market Court fee, together with interest.  

The costs award is particularly noteworthy because the mere fact that an authority’s decision is overturned does not normally mean that the authority must reimburse the appellant’s legal costs. The decisive factor was the Market Court’s finding that PRH’s approach had been based on an incorrect legal premise.

A good name is not always a good trademark

Had a client asked for advice before adopting SÄHKÖMESSUT (“electricity fair”), I would probably have recommended reconsidering the choice. 

SÄHKÖMESSUT tells the Finnish-speaking public very clearly what the service is. That may make it an attractive name from a marketing perspective, but it also makes it problematic as a trademark. The more descriptive a mark is, the more difficult it generally is to obtain meaningful exclusivity. 

Even if a descriptive mark eventually becomes registrable through acquired distinctiveness, its scope of protection may remain narrow. Defending the registration and preventing competitors from using similar signs may also prove difficult and costly. 

Of course, where a descriptive sign has already been used for decades and has become well known within a particular industry, changing it may no longer be realistic. In that situation, however, proving acquired distinctiveness may require substantial evidence, and that evidence must address the relevant goods, services and relevant public for which protection is sought.  

The SÄHKÖMESSUT decision is therefore a useful reminder that trademark strategy should look beyond the question of whether a sign can be registered. A strong trademark should not only be registrable. It should create an exclusive right that can be effectively defended in practice. 

The case is not yet final, as the Market Court’s decision has been appealed to the Supreme Administrative Court.