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Legal alerts / 26 Mar 2018

Legal Alert – Draft Government Proposal for a new Finnish Trademarks Act

The Finnish Ministry of Economic Affairs and Employment appointed a working group in 2016 for a total revision of the Trademarks Act. The working group submitted its draft Government Proposal for a new Trademarks Act to the ministry on 19 March 2018. The draft proposal is available on the website of the Ministry of Economic Affairs and Employment (in Finnish). The new Trademarks Act will implement the revised Trademark Directive and enforce the Singapore Treaty on the Law of Trademarks. A large amount of substantive and procedural changes will be introduced.

The draft Government Proposal also introduces amendments to related laws, particularly to the Company Names Act. In addition, the new act would result in the annulment of the current Act on Collective Marks, while provisions concerning collective marks and control marks would be included in the new act.

Substantial proposals

One of the main proposals for changes is the introduction of an administrative procedure for the revocation and declaration of invalidity of a trademark parallel to the current court proceedings. This administrative procedure would largely correspond to the current opposition procedure. The trademark owner would henceforward further be able to invoke the five years (partial) non-use of a claimant’s trademark or tradename as a defense in opposition, revocation or invalidity proceedings. To avoid that the same trademark is subject to parallel administrative and court proceedings, the working group proposes that if court proceedings concerning the same trademark are initiated between the same parties, the proceedings at the Finnish Patent and Registration Office will be terminated.

The working group also proposes revocation of company names within corresponding administrative proceedings in addition to current court proceedings. The administrative procedure would, however, at this stage only be available for revocation due to non-use. The working group further proposes to introduce partial revocation in the case of non-use. Said changes would at least partly solve the problem that Finnish companies with a broad (partly undefined) field of business too often constitute a relative ground for refusal for national trademark registration.

As another major amendment, the working group proposes that holders of trademark registrations applied for before 1 October 2012 for class headings will need to specify their list of goods and services to ensure that it follows the new classification provisions. The list of goods and services would have to be specified at the latest in connection with the renewal of respective trademark registrations. After the due date the class headings would be considered to cover only those goods and services that are covered by the literal interpretation of said class heading.

A few other notable changes are the waiver of the graphical representation requirement, the introduction of the exclusive right of a Finnish trademark owner in transit situations, and the introduction of a clear provision criminalizing infringement of EU trademarks (typically counterfeits).

What happens next?

Interest groups have been asked to submit their opinions by 22 May 2018. The draft Government Proposal will be handed over to Parliament during the autumn session of 2018, and the new Trademarks Act is intended to enter into force by January 2019.

Åsa Krook is a member of the working group appointed by the Ministry of Economic Affairs and Employment. Borenius’ lawyers are available to assist in addressing any questions you may have regarding this legal alert. Please feel free to contact any of the Borenius’ lawyers listed in this alert or those with whom you usually work.

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