Update on the Finnish Trademark law Reform and Finnish Bar Association’s statement on the draft proposal for a Government Bill to the Parliament
The draft proposal for a Government Bill to the Parliament for the Trademark law reform was published on 20th March 2018, and the deadline for potential statements to be given on account of the proposal was due on May 22, 2018. Approximately 20 different statements were given, and also the Finnish Bar Association gave its statement on account of the proposal on May 22, 2018. The new Trademark Act will come into force in the beginning of 2019. Progress on the Finnish Trademark law Reform can be followed in Finnish here, and also all statements given on account of the proposal can be found behind this link.
The Bar Association’s statement was prepared in cooperation with three different law firms including Roschier, and the statement addresses inter alia procedural issues relating to new administrative invalidation and revocation proceedings. The Bar Association also briefly touches upon the timely topic of Intellectual property offence in the Criminal Code of Finland; an infringement of an EU trademark or a Community design cannot, according to the current wording of the Criminal Code, constitute an intellectual property offence in Finland, which is a clear flaw in the Finnish legislation. The draft proposal addresses this deficiency by introducing changes to the Criminal Code, but only as far as EU trademarks are concerned. The Bar Association considers important that the deficiency is also corrected in respect of Community Designs at the same time instead of postponing it further.
In addition, the Bar Association objects to the proposed obligation for trademark owners to specify the scopes of their existing Finnish trademark registrations which cover class headings and have been filed before October 1, 2012; currently old Finnish registrations covering class headings are interpreted as covering all goods/services falling in the class in question, but according to the proposal all trademark registrations that have not been specified at the next renewal after the law comes into force would eventually be interpreted as only covering the literal meaning of the specification of goods and services. If a trademark owner fails to specify the scope of its registration, the scope may be significantly narrowed. The Bar Association considers that the proposal will put an unnecessary burden on rights holders and negatively affect their acquired rights in a retroactive manner.
In addition, the Bar Association calls for changes to the current examination of trademarks against prior trade names. Finnish trade names can be registered for “all legal business”, and a trade name registration can unnecessarily prevent the registration of a subsequent trademark regardless whether there is any overlap in the actual field of business. Therefore, the Bar Association proposes an alternative where prior trade names would not be cited ex officio, but rather on account of an opposition based on a prior trade name used in the course of trade. Additionally, the Bar Association also calls into question whether there are any reasonable grounds for maintaining surnames as obstacles for trademark registration as has been done in the proposal.
The Bar Association’s full statement in Finnish can be found here.