Legal Alert – Working Group Proposes Changes to the Finnish Trademark Act
As part of a larger strategy addressed by the Finnish Government to enhance the effective use of intellectual property in Finland, the Finnish Trademark Act (7/1964) (the Trademark Act) was issued to be revised. The Ministry of Employment and the Economy appointed a working group on 28 March 2011 to assess necessary changes to the Trademark Act in order to bring it up to date. The working group gave its memorandum on the modernization of the Trademark Act in October 2012.
The working group considered that the most urgent need for update was associated with the case law of the European Court of Justice following the implementation of the Trademark Directive. Due to the lack of a particular provision on the limitation of the effects of a trade mark in relation to certain third party trademark use in accordance with honest business practices, the Finnish Supreme Court has been forced to directly apply EU-law in relation to the limitations set out in Article 6 of the Trademark Directive. The working group now proposes a corresponding section to the Trademark Act on the limitation of the effects of a trademark in relation to third party use of own name or address in the course of trade, to describe own goods or services or where necessary to indicate the intended purpose of a product or service, accessory or spare part.
The working group further proposes several other changes to chapter 1 of the Trademark Act aiming at improving the structure of the old act and at codifying established legal positions relating to the definition of a trademark, the concept of likelihood of confusion, the required distinctiveness of a trademark as well as the scope of protection of well-known marks.
Another notable proposal for change is a provision on administrative annulment of unused marks. At present a trade mark registration can after the opposition period only be revoked or invalidated on the initiative of a third party through court action. Under the working group proposal the National Board of Patents and Registration of Finland could upon application revoke a trade mark registration for example when the trade mark has no owner or due to non-use.
The memorandum is currently in circulation for comments. A Governmental Bill can be expected to be given in autumn of 2013. At the moment the Ministry of Employment and the Economy is waiting for EU Commissions proposal for new EU Trademark Directive and Trademark Regulation, which are expected to be given during this spring. Said initiatives are expected to request further revision of the Trademark Act and the Trade Name Act (1979/128) in a few years to come.
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