Registration of trade marks with reputation now possible

The National Board of Patents and Registration (the "NBPR") established a separate list for trade marks with reputation by its decision of 6 June 2007 (the "List"). The NBPR has been accepting applications since 15 August 2007 but so far the interest has not been overwhelming as some 20 applications have been submitted.

As the List is established by the NBPR’s own resolution, the List operates outside the scope of ordinary trade mark examination practice and is distinctly separate from the official Trade Mark Register. Therefore, entry to the List does not create any concrete additional legal rights to a trade mark proprietor. For example, the NBPR does not automatically consider any mark on the List as a bar to registration of an ordinary trade mark application, but will instead notify both parties on the possible similarity. It is then up to the proprietor of the well-known mark to decide whether it will initiate opposition proceedings against the new application or not.

The key benefit to any trade mark holder is that by registration the proprietor obtains an authoritative decision on mark’s reputation in Finland. A registration in the List is a strong indication that the mark with reputation will be regarded as such by courts and other authorities alike. This works both as deterrent in preventing conflicts but also serves to ease their resolution and evidentiary burden.

For further information, please contact:

Lasse Laaksonen, Head of Brands & Designs Practice

Åsa Krook, Attorney