Partial and administrative cancellation of Finnish trade name registrations on the grounds of non-use shall be possible soon
Relevant amendments to the Finnish Trade Names Act regarding partial cancellations of trade names on the grounds of non-use and on other grounds listed in the Act will apply as from 1 May 2021.
Prior to 1 May 2021, a registered trade name could be cancelled only if the objection to the registration concerned the entirety of the trade name i.e. all activities listed under the scope of business of the trade name registration. According to the amended Section 19(3) (2019/546) of the Finnish Trade Names Act (128/1979) Act, a trade name registration can be cancelled in full or in part if there is an objection to the registration. This concerns auxiliary trade names as well. Although this provision took effect on 1 May 2019, it will apply to trade names registered prior to 1 May 2019 only from 1 May 2021 onwards.
A registered trade name can be partially cancelled not only on the grounds of non-use but also on other grounds listed in the Act. Therefore, cancellation applies, for instance, if a trade name registration is confusingly similar to a pre-existing trademark or trade name registration in relation to only certain business activities included in the trade name registration or if the lack of identifiable character (a concept similar to distinctiveness) extends only to certain business activities of the trade name registration.
The greatest benefit of the new provisions is that trade name registrations, which have not been used for at least five years, can be cancelled if the non-use concerns only certain activities listed under the scope of business of the trade name registration.
Another relevant amendment (the new Section 20(2) (2019/546) of the Act) is that cancellation proceedings based on non-use can also be initiated before the Finnish Patent and Registration Office (the PRH), whereas previously (prior to 1 May 2021) they could be initiated only by commencing civil proceedings before the Finnish Market Court. The option to have trade name registrations cancelled before the PRH concerns only cancellations on the grounds of non-use, not on other grounds.
Proceedings before the PRH are handled primarily in writing, on the basis of the parties’ briefs. After the PRH has received an application for cancellation on the grounds of non-use, it will allow the trade name registrant to submit a written statement and accompanying evidence. Should the registrant remain passive, the application will be accepted unless the application is “manifestly ill-founded”. Additionally, if a trade name registration is only partially cancelled, the PRH or Market Court (as appropriate) will order that the cancelled trade name remain on the register for a reasonable period to allow the registrant to notify the PRH of the registration of a new trade name or another change (such as a change of the scope of business of the registration).
The right to apply to cancel a trade name registration has not changed and is still primarily limited to those who “suffer harm from the [trade name] registration”. Therefore, citations of pre-existing trade names against pending Finnish trademark applications or a trade name registrant’s threat to initiate infringement proceedings before the Market Court are the likeliest scenarios when cancellation proceedings based on non-use take place.
As follows from the above, from 1 May 2021 possible citations of pre-existing trade names that have not been used for at least five years may be overcome by filing non-use cancellation actions against the citations before the PRH. This is a much cheaper option than having to bring civil proceedings before a court.
The clear majority of pre-existing rights cited against pending Finnish trademark applications have been EU trademarks. Regardless, when a citation of a pre-existing trade name registration has taken place, it has in practice been difficult to overcome if the trade name has been registered for a broad list of business activities and the registrant of the pre-existing trade name has declined to grant a letter of consent.
The amendments to the Act will therefore endow the trademark and trade name applicant with a useful tool, enabling these parties to have a greater chance of obtaining protection for their corresponding Finnish IP right.