New Finnish Trademark Act and Other IP Reforms: Key Changes
2 May 2019
Authors: Sarita Schröder and Panu Siitonen
The long-awaited new Finnish Trademark Act and other IP reforms entered into force on 1 May 2019. They bring about many improvements for brand owners – even beyond those mandated by the EU legislator to implement the Trademark Directive. Below is a snapshot of a few key changes.
Overcoming Relative Grounds for Refusal Citations Becomes Less Burdensome
Finland (alongside Sweden) is among the few EU Member States where relative grounds for refusal are examined at the authorities’ initiative when registering trademarks and company or trade names. In each case, both trademarks and company or trade names can be cited. Especially company and trade names cause many unnecessary headaches, as they can be registered to cover “all lawful business activities”. Consequently, they pose an obstacle for an identical or similar mark or name for any goods, services, or type of business.
Overcoming relative grounds for refusal can be cumbersome, as it requires either convincing the authority of an error in their assessment or obtaining consent from the prior rights holder(s) or managing to have the prior right(s) revoked or invalidated.
Previously, revocation and invalidation matters were exclusively handled by the Market Court, where the court fee is EUR 2,050 and the losing party is generally ordered to compensate the winning party’s costs. Moreover, partial revocation of company or trade names was not possible. Therefore, as long as such a name was used for something, it could remain indefinitely registered for everything.
The new legislation introduces an administrative revocation and invalidation procedure for trademarks. It is applicable in both contentious and non-contentious cases. However, the court route also remains available should either party so prefer. Similarly, an administrative revocation procedure is introduced for company and trade names that have not been put to genuine use over a continuous period of five years. Partial revocation of company and trade names is also made possible.
These changes are expected to ease the burden caused by the authorities’ examination of relative grounds for refusal – which there are no plans to discontinue or limit.
Opposition Proceedings Become More Efficient
Previously, opposition proceedings before the Finnish Trademark Office were – at least objectively speaking – in many ways less efficient than those before, for example, the European Union Intellectual Property Office (the “EUIPO”).
Among other things, there was no cooling-off period to facilitate a settlement. Instead, if the parties needed time to negotiate, they had to apply for extensions of time limits, which were only granted for a few weeks at a time. Moreover, the applicant could not defend itself by demanding that the opponent provide proof of use of its earlier right(s). Rather, the applicant had to file a revocation action before the Market Court if it believed that there had been no genuine use of the opponent’s right(s) for a continuous period of five years.
The new legislation introduces a two-month cooling-off period, which may be extended twice by five months at a time. Moreover, demanding proof of use as a defence is made possible.
Opposition proceedings will also be streamlined by generally limiting the number of statements per party to a maximum of two, whereas previously the parties were usually allowed to keep submitting statements until both confirmed that they had nothing further to comment. However, what remains unchanged is that, unlike before the EUIPO, arguments and evidence supporting the opposition must be filed in connection with filing the opposition.
Other Changes Included in the New Legislation
Other changes brought about by the new legislation include:
- removal of the graphical representation requirement for trademarks;
- introduction of the what-you-see-is-what-you-get principle for black and white trademarks applied for after the entry into force of the new legislation;
- shortening of the term of protection for new trademarks from ten years as of the registration date to ten years as of the application date;
- introduction of a specific provision concerning infringing goods in transit;
- possibility to clarify goods and services covered by trademarks applied for prior to 1 October 2012 (or in some cases, between 1 October 2012 and 31 December 2013) using class headings or numbers;
- certain changes to procedure, civil remedies, and criminal sanctions.
It remains to be seen how enthusiastically brand owners will take advantage of the possibilities brought about by the new legislation – and how well prepared the Finnish Trademark Office is to handle its new responsibilities. Our brand protection experts will closely follow the implementation of the legislation into practice.