20.11.2015

BMW AG – Enforcement of BMW’s Registered Community Designs

Related services

High-quality design is a key success factor for car manufacturers building their brands and developing a loyal customer base. This is particularly true of premium car brands. High-end design products make tempting targets for manufacturers and sellers of after-sales replica parts.

This was the core issue in a recent dispute where we successfully represented BMW; a design rights infringement case concerning replica rims. The court upheld our client’s infringement claim, ordering the defendants to pay damages. The case is precedent-setting in Finland in holding that car rims do not constitute ‘spare parts’ under design law and in defining the scope of criminal liability for the infringement of European-level IP rights, such as EU Community designs and EU trade marks.

Our team

Latest references

BMW AG – Enforcement of BMW’s trademark and design rights

We successfully represented BMW in an exceptionally long dispute over whether the spare rims sold by the defendant and the hub caps included in them infringed BMW’s trademark and design rights. The Market Court found that the sign used by the defendant caused a likelihood of confusion with BMW’s trademarks. The defendant had used the sign on the hub caps and in the marketing of the hub caps and rims, leading the Market Court to find that the defendant had infringed BMW’s trademark rights. The defendant admitted to infringing BMW’s Community design but denied the related injunction claim. However, the Market Court found that there was no particular reason to refrain from issuing an injunction. The Market Court prohibited the defendant from continuing to infringe BMW’s trademarks and Community design and ordered the defendant to alter or destroy the products and marketing materials that infringed BMW’s rights. Furthermore, the Market Court ordered the defendant to pay BMW EUR 70,000 in reasonable compensation and EUR 80,000 in damages for the trademark infringements, as well as EUR 7,000 in reasonable compensation and EUR 8,000 in damages for the design right infringement. The amounts can be considered exceptionally high in Finland. Additionally, the Market Court ordered the defendant to pay a significant portion of BMW’s legal costs with interest on late payment. In its decision of 11 March 2025, the Supreme Court of Finland did not grant the defendant leave to appeal, and also decided that there was no need to seek a preliminary ruling from the Court of Justice of the European Union. Thus, the Market Court’s judgements (MAO:494/18 ja 517/2023) are final. In addition to the main dispute, BMW demanded in a separate proceeding that one of the defendant’s trademark registrations be revoked. A total of three separate legal proceedings were conducted in the Market Court regarding the revocation. The defendant’s trademark registration was ultimately revoked.

DNA – Global brand portfolio management and IP enforcement

We are advising DNA Plc in brand protection and intellectual property enforcement matters globally. Our intellectual property team manages DNA’s global trademark portfolio, including registration, prosecution, opposition and enforcement. We also advise DNA in questions concerning consumer and marketing law, unfair competition, social media, domain names and cybersquatting. DNA Plc is one of Finland’s leading telecommunication companies. DNA offers connections, services and devices for homes and workplaces, contributing to the digitalisation of society. The company has approximately 3.7 million subscriptions in its fixed and mobile communications networks. In 2024, DNA’s total revenue was EUR 1,100 million, and the company employs about 1,600 people around Finland. DNA is part of Telenor Group.

Arctic Biomaterials – Patent litigation over bioactive biomaterials for orthopedic implants

We successfully represented Arctic Biomaterials Oy before the Finnish Market Court in an extensive dispute concerning alleged patent infringement and invalidity of the patent-in-suit. Our client has invented next-generation bioabsorbable composites that are engineered with Arctic Biomaterials’ X3 bioactive natural mineral fibers, offering robust, bioactive reinforcement for orthopedic implants. These advanced composites empower customers to create high-strength bioabsorbable solutions for the most demanding applications. Back in 2019, Purac Biochem B.V. alleged, among other things, that our client’s Evolvecomp product had infringed Purac Biochem B.V.’s European patent validated in Finland protecting a biocompatible composite and its use. Purac Biochem B.V. filed a preliminary injunction against our client under the Act on Securing the Provision of Evidence in Civil Cases Concerning Industrial Property Rights and Copyright (344/2000). The Finnish Market Court issued an ex-parte injunction against our client on 2 April 2019 (MAO:150/19) and a final injunction on 19 February 2020 (MAO:59/20). Our client had disputed Purac Biochem B.V.’s patent infringement claim from the beginning and claimed that the patent-in-suit was invalid. After five years of litigation, the Finnish Market Court handed down a ruling in the joined invalidity and infringement cases on 10 October 2024 (MAO:560/2024 and MAO:561/2024) declaring Purac Biochem B.V.’s patent invalid and dismissing Purac’s infringement action against Arctic Biomaterials. Also, the preliminary injunction based on an alleged patent infringement imposed against Arctic Biomaterials was cancelled. The Market Court declared Purac Biochem B.V.’s patent invalid due to a lack of inventive step. The Market Court applied the could-would method for determining whether the patent-in-suit is inventive or not. The could-would method is based on determining whether a person skilled in the art would (not simply could, but would) have made a specific improvement to prior solutions, based on the available prior art. The Market Court ruled that it would have been obvious to a person skilled in the art to solve the objective technical problem of the patent-in-suit in the manner presented in claim 1, using as a starting point the closest prior art (prior patent publication) and combining it with the teaching of another prior art publication. The decision is final.

Valio – Global Brand Portfolio Management and IP Enforcement

We are advising Valio in brand protection and intellectual property enforcement matters globally. Our IP team manages Valio’s global trademark, design and copyright portfolio, including registration, prosecution, opposition and enforcement. We also advise Valio in questions concerning IP licensing, consumer and marketing law, social media, domain names and cybersquatting, and food sector regulation. Valio is Finland’s biggest dairy business and food exporter with EUR 1.7 billion annual net sales. Valio’s products are found in some 60 countries and account for 25% of Finland’s total food exports. The company’s R&D work follows the footsteps of Nobel Prize winner A.I. Virtanen, and Valio has some 4,200 employees around the world. The Valio brand has been regularly recognised as one of the most valued brands in Finland. Other well-known and beloved brands of Valio include, among others, AURA, OLTERMANNI, POLAR and OIVARIINI.

Search from the site.