Can an almost identical name be registered as a trademark just because it has no dictionary meaning? This was put to the test when the well-known Finnish confectionery brand, Panda, challenged the registration of the ‘banda’ mark in the EU.
Berggren successfully assisted Orkla Suomi Finland Oy Ab in a trademark opposition and appeal case concerning the reputed Panda confectionery brand before the European Union Intellectual Property Office (EUIPO). Initially, EUIPO’s Opposition Division rejected Orkla’s opposition against the ‘banda’ trademark application in the EU, basing its decision on the so-called “principle of neutralisation”.
In its decision of 7 April 2025, EUIPO’s Board of Appeal sided with the opponent, Orkla, and found – in contrast to the Opposition Division – that the principle of neutralisation does not apply in this case. It concluded that the ‘banda’ figurative mark, applied for, for example, various confectionery products and retail services related to them, could not be registered due to the likelihood of confusion with Orkla’s previously registered Panda trademarks:
The principle of neutralisation
The principle of neutralisation means that if at least one of the trademarks being compared has a clear and specific meaning that can be immediately grasped, such conceptual differences may offset other similarities shared by the marks – namely, their visual and aural similarities. The impact of conceptual difference is taken into consideration when making the overall assessment of similarity between the trademarks.
The application of the neutralisation doctrine may lead to the conclusion that even highly similar or nearly identical trademarks, covering the same or similar goods, are not considered to be at risk of confusion with each other, even if other preconditions for finding a likelihood of confusion are present.
The principle of neutralisation can also be applied cases involving trademarks with reputation, which would otherwise enjoy a broader scope of protection, irrespective of the risk of confusion.
‘Panda’ sweets or ‘Banda’ sweets?
The Opposition Division assessed, among other things, whether the Finnish public would confuse the ‘banda’ mark with the Panda mark. It also considered whether, from the perspective of the relevant Finnish public, there is such a link or association between the ‘Panda’ and ‘banda’ marks that ‘banda’ could unjustifiably benefit from the reputation and recognition enjoyed by the Panda mark in Finland, or be detrimental to it – even if the public would not necessarily confuse the marks with each other.
Orkla, the owner of the Panda brand, presented several arguments supporting its opposition. These included the near impossibility of distinguishing the marks by ear, and that “panda” is often misspelled as “banda”. Extensive evidence was submitted about the long history and broad recognition and reputation of the Panda brand. The history of the Finnish Panda brand dates back decades, with the confectionery factory that started in Vaajakoski, Finland, in the 1920s adopting the Panda trademark for its products in the 1950s.
Nevertheless, the Opposition Division rejected the opposition against the ‘banda’ mark, citing the principle of neutralisation. It held that although the marks are otherwise similar, the Finnish public would understand the meaning of the word “panda” immediately, whereas the word “banda” has no meaning, and therefore the public can distinguish the marks from each other. The Opposition Division also determined that although the ‘Panda’ mark enjoys a reputation in Finland based on the evidence presented, and is therefore in principle entitled to extended trademark protection as stipulated in the EU trademark regulation, the difference in semantic meanings excludes the extended trademark protection granted to renowned trademarks.
Orkla appealed the decision of the Opposition Division. EUIPO’s Board of Appeal sided with Orkla, accepted the appeal in its entirety, and concluded that the neutralisation doctrine does not apply to this case.
The Board of Appeal determined that there is a risk that ‘Panda’ and ‘banda’ marks could be confused, and therefore the ‘banda’ mark cannot be registered. In its overall assessment of similarity, the Board of Appeal took into account, among several other factors, that it cannot be excluded that the marks could be identical in meaning.
A significant factor in the success of the appeal was the evidence provided by the opponent, Orkla, which demonstrated that “panda” is often misspelled as “banda”. The Board of Appeal considered this evidence as supporting the arguments presented earlier in the opposition proceedings and concluded that the opponent had successfully proven that “banda” can be a misspelling of the word “panda”.
The decision of the Board of Appeal in the 'Panda v. banda' case strengthens the position of brand owners
Strict application of the neutralisation doctrine whenever one mark has a clear and specific meaning could, from a trademark law perspective, allow competing products to enter the market under nearly identical trademarks – even when there is in fact a likelihood of confusion or when a competitor could unfairly benefit from the marketing investment and appeal of the reputed brand, such as the perceived quality or other attributes linked to the brand.
In addition to Orkla, other well-known brand owners, such as the technology giant Apple, have faced challenges in the EU with the EUIPO’s Opposition Division applying the principle of neutralisation in a strict fashion. For example, the Opposition Division rejected Apple’s oppositions against ‘eppla’ and ‘Oppla’ marks, citing the neutralisation doctrine, even despite that – as in the present Panda v. banda case – the Apple mark was considered to be a ‘trademark with reputation’ in these decisions.[1]
The decision of the Board of Appeal in the Panda v. banda case is significant for the assessment of the application of the neutralisation principle and strengthens the position of brand owners. The decision demonstrates that the neutralisation principle should not be applied categorically whenever one of the marks has a clear and specific meaning. It is essential to consider the relevant public’s perception of the marks, despite the differences in dictionary meanings. This case also highlights that it is essential for the opponent to present all advantageous arguments and assertions and substantiate them convincingly.
The Berggren team assisting Orkla in the opposition and appeal case included lawyers Siiri Rajapuro and Milla Lehtoranta, IP specialist Mirva Junnilainen, and legal trainees.
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[1] The EUIPO Board of Appeal later overturned the Opposition Division’s rejective decision in the opposition case concerning the ‘eppla’ figurative mark. Apple has also appealed the decision in the opposition case concerning the ‘Opple’ mark, and the appeal proceedings are still ongoing.