18 October 2018
New Finnish Trademarks Act

The Finnish Trademarks Act will be fully reformed at the beginning of 2019. Although the main driver for the reform has been the implementation of the new EU Trademark Directive ((EU) 2015/2436) and Singapore Treaty (Singapore Treaty on the Law of Trademarks 2006), the reform is most welcomed, since the previous Trademarks Act was enacted in 1964. Even though there have been a number of partial reforms of the Act over the years, its structure is currently somewhat outdated, unclear and the provisions do not fully comply with the EU case law.

The new Trademarks Act will introduce several significant changes to the opposition and invalidation proceedings, requirements for the specification of goods and services, representation requirements of a trademark, treatment of goods in transit, and more.

Requirement to amend the lists of goods and services of registrations registered before 2014 containing Nice class heading

According to the old Finnish trademark practice, the trademark registrations that contain Nice class heading in the list of goods and services enjoy protection for all goods and services falling into that specific class. This interpretation was changed in 1 October 2012 for new applications as a consequence of the CJEU's decision in the "IP TRANSLATOR" case (C-307/10). For applications filed between 1 October 2012 and 31 December 2013, the applicants were able to use the Nice class heading as a part of the lists of goods and services, and make an additional claim according which the application is intended to cover the full Nice alphabetical list of goods/service of that specific class. For applications filed after 1 January 2014, the applications containing only the Nice class heading in their list of goods/services, the scope of protection is limited to those goods and services that are clearly covered in the literal wording of the class heading.

As a consequence, it has become difficult to interpret the actual scope of protection of a Finnish trademark registration containing a Nice class heading in the list of goods and services, as this depends on when the application was filed.

In order to clarify the current situation, the new Trademarks Act offers an opportunity to specify the lists of goods and services of those trademark registrations that were filed before 1 January 2014 with a full Nice class heading (or a class heading and a claim that the full Nice alphabetical list is covered). The owners of those registrations can specify the list by listing all goods/services falling into that class that were intended to be covered by the registration. Unlike the similar reform made to EUTMs, the list is not restricted to cover only those goods and services that were included in the Nice alphabetical list at the time of the filing of the application (except for those applications that were filed between 1 October 2012 and 31 December 2013 and that contain a reference to the Nice alphabetical list). The final deadline for requesting the specification is the first renewal of the registration after the enactment of the new Trademarks Act. If no specification is requested, the scope of protection of the trademark registration is limited to those goods and services that are clearly covered in the literal wording of the class heading in question. The said does not, however, apply to applications filed between 1 October 2012 and 31 December 2013 containing also references to the Nice alphabetical list. If the owner of such registration do not request specification, the Office will confirm that each class of the registration covers all the goods and services of the Nice alphabetical list and removes references to the Nice alphabetical list.

It is notable that the requirement also applies to those International Registrations that were designated to Finland before 1 October 2012 and that cover a full Nice class heading in their list of goods and services.

Administrative invalidation and revocation of trademark and trade name registrations

According to the old Trademarks Act, trademark and trade name registration can only be invalidated or revocated by the Market Court. The new Trademarks Act introduces a possibility to file an administrative invalidation or revocation action against a trademark or trade name registration. If the administrative action is filed, the decision is made by the Finnish Board of Patent and Registration, with a Market Court as the appeal court. The invalidation or revocation action may also be filed directly with the Market Court. If an action is filed in both instances, the Board of Patent and Registration has to cease the examination of the action, and the matter will be decided by the Market Court.                                                         

The revised Trade Name Act also enables the partial invalidation of trade names on the basis of 5 years of non-use, which was not possible in accordance of the old Act.

Reformation of opposition proceedings

As a part of the implementation of the EU Trademark Directive, the new Trademarks Act streamlines the trademark opposition proceedings by making it possible for the applicant to request the opponent to prove the use of an earlier right that has been registered more than five years ago. According to the old Trademarks Act, the validity of the earlier right could only be questioned by filing a non-use invalidation action against it.

The new Trademarks Act also introduces some additional changes to the opposition proceedings, including the possibility for the parties to request a suspension of the proceedings by a joint request.

Changes to the representation of the mark

The new Trademarks Act abolishes the requirement for the graphical representation of a mark. According to the new Act, a trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

  1. distinguishing the goods or services of one undertaking from those of other undertakings; and
  2. being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

In addition, the new Trademarks Act limits the scope of protection of the new black and white figurative marks, which in the future only cover black and white versions of the mark. The new provisions have no impact on the old black and white registrations, which continue to protect all color variations of a figurative mark.

Goods in transit

Also the provisions regarding goods in transit are clarified in accordance with the Trademark Directive. According to the new Act, a trademark owner can prevent all third parties from bringing goods into Finland, even if the goods are only in transit, if such goods bear an identical or similar mark. However, this entitlement lapses if the holder of the goods provides evidence that the trademark owner is not entitled to prohibit the placing of the goods on the market of the country of final destination.  

Conclusions

The new Trademarks Act provides welcome clarification to the Finnish trademark system, and it's expected to smoothen and streamline several parts of the trademark proceedings – including opposition, invalidation and revocation actions. However, especially the provisions regarding the specification of the lists of goods and services of trademark registrations containing Nice class heading put a lot of pressure on the holders of old Finnish trademark registrations (and International Registrations designating Finland). It is vital to ensure that the scopes of protection of old trademark registrations are not inadvertently narrowed.

We recommend that the portfolios of Finnish trademark registrations are carefully reviewed so that appropriate measures can be taken in a timely manner.

For further information, see: https://valtioneuvosto.fi/paatokset/paatos?decisionId=0900908f805df975

Brand Protection Counsel
(Helsinki)
Tel. +358 20 506 6683
Mobile: +358 50 487 2996

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