Legal Alert – New Provisions of the Trademarks Act into Force 1 September 2016
The new provisions of the Finnish Trademarks Act enacted by the Parliament enter into force in the beginning of September. The new provisions relate to the long-waited partial revision of the Act which has been under preparation since 2011. The purpose of the mostly technical partial revision is to bring the Act up-to-date with the current EU legislation and case law as the Act has been considered not to fully correspond to the Trademarks Directive 2008/95/EY and the established case law of the CJEU.
The partial revision concerns mainly the first chapter of the Act, which includes general provisions on trademarks, and will bring the structure and terminology of the Act in line with the Directive. The revision does not as such change the current state of law as the Directive and case law of the CJEU have already been applied in practice in case there have been gaps in the national law. However, after the revision, the current state of law will be more apparent to readers of the Act. The revision thus promotes legal certainty and legal protection.
- The current provisions on distinctiveness will be clarified: The new Act includes a separate provision on the definition of distinctiveness, which will make the term distinctiveness more usable in practice.
- The term “liability to cause confusion” (sekoitettavuus) will be changed to “likelihood of confusion” (sekaannusvaara) in accordance with the Directive and established EU case law.
- The new Act will make it clearer that there is no need to present evidence of likelihood of confusion in case of double identity (identical marks and identical goods/services), and that likelihood of confusion is not a prerequisite for the protection of trademarks with reputation. The new Act will thus better reflect the three stages of protection: protection against double identity, protection against likelihood of confusion, and protection for marks with reputation.
- The Act will include a new provision that sets out certain limitations to the exclusive right, equivalent to Article 6 of the Directive. Section 7 stipulates that the trademark shall not entitle the proprietor to prohibit activities that fall within the scope of the limitations under section 7 (e.g. indicating the intended purpose of a product or service), provided that they are in accordance with honest practices in industrial or commercial matters. So far, the Act has not included express provisions on limitations, due to which the Finnish Supreme Court has in a few cases applied EU law directly instead of national law.
Although certain questions were raised concerning the relationship between trademarks and tradenames, these questions are left open for the time being. In addition, the legislator has not taken a stance on the unsettled issue of applicability of the Finnish Criminal Code to EU trademarks in spite of the few changes made to the Finnish Criminal Code (39/1889). These issues will be discussed in more detail in connection with the complete revision of the Act underway.
Should you have any further questions, our experts are glad to answer them.