Legal Alert – The New Finnish Trademarks Act Approved by the Parliament
The Finnish Ministry of Economic Affairs and Employment appointed a working group two years ago with the intention of completely revising the Finnish Trademarks Act. The working group submitted its report to the Ministry on 19 March 2018, and on 18 October 2018, a Government bill was submitted to the Parliament. The Parliament approved the Government bill during the second reading on 5 March 2019 for the new Trademarks Act. In the next phase, the Parliament will prepare the final wording of the new Act after which the Act will be presented for the President’s ratification within three months of its submission. The Act is expected to come into force by the end of this spring.
With the new Trademarks Act, Finland will implement the revised EU Trademark Directive, enforce the Singapore Treaty on the Law of Trademarks and bring the present trademark regulation up to date. In addition, the revision will introduce amendments to related legislation such as the Finnish Company Names Act, the Criminal Code and relevant procedural acts. The current Act on Collective Marks will be annulled since the provisions concerning collective marks and control marks are included in the new Trademarks Act.
The new act will bring certain changes to the current proceedings, such as, all trademark applications and renewals should be filed online, in general. In addition, the new act will introduce new classification rules and restrict the scope of protection for black and white figurative trademarks. Under the new act, black and white trademarks will not cover all colour variations – only the version in black and white. The requirement for graphical representation of a trademark application will be abandoned. Administrative procedures for revocation and invalidation of trademarks will be introduced as an alternative to civil court proceedings.
New classification provisions
The new act introduces new classification provisions, according to which trademark applicants are required to identify the goods and services for which they seek protection with sufficient clarity and precision (praxis adopted on 31 December 2013 as a consequence of the IP translator case (C-307/10) ruling), will be codified). Trademark registrations will include only goods and services that are clearly covered by the literal meaning of the terms used in classification.
Simultaneously the renewed act brings a requirement to amend the lists of goods and services of registrations filed before 1 October 2012, using the Nice class headings (or only class number if filed before 1996). As a result of this, owners of trademark registrations shall specify their list of goods and services to ensure that they follow the new classification provisions by the renewal of the respective trademark registrations. If the last date for renewal of a trademark is within six months of the law’s entry into force, such specification may be submitted within six months from the entry into force of the new act. After the said due date, class headings would, unless specified, embrace only those goods and services covered by the literal interpretation of the said class headings. The trademark owners of registrations filed between 1 October 2012 and 31 December 2013 using class headings and a reference to the alphabetical list of the Nice classification may within the same time specify the goods and/or services on the alphabetical list. The main aim of the new classification provisions and amendments thereof is to make the trademark register clearer and more uniform.
Introduction of administrative revocation and invalidation proceedings and non-use defence
The new act will introduce an administrative procedure for the revocation and declaration of invalidity in addition to the current civil proceedings. This administrative procedure largely corresponds to the current opposition procedure. In order to avoid parallel administrative and civil proceedings, the new act states that if a court proceeding concerning the same trademark will initiated between the same parties, proceedings at the Patent and Registration Office will be terminated.
Corresponding administrative procedures will also be introduced to deal with partial or total revocation of company names and auxiliary trade names in addition to the current court proceedings – however, such alternative administrative procedures are limited to cases of non-use. Finnish companies with a broad (partly undefined) field of business frequently constitute a relative ground for refusal for national trademark registration despite operating in a totally different field since the Patent and Registration Office examines relative grounds for refusal ex officio. The presumably more efficient administrative procedures and possibility for partial revocation should at least partly help trademark owners to more easily overcome hurdles relating to the cross protection between trademarks and trade names.
Furthermore, trademark owners can henceforward invoke the five-year partial or total non-use of a claimant’s trademark or trade name as a defence in opposition, revocation, or invalidation proceedings.
Other key amendments
Other key amendments are the introduction of an exclusive right of a Finnish trademark owner in situations where counterfeit goods are caught in transit (not put up for sale on the Finnish market, but caught while passing through) as well as the introduction of a clear provision criminalising infringement of EU trademarks (typically counterfeits), and also clear provisions criminalising infringement of EU designs. Both changes aim at improving the available means in the fight against counterfeit goods.
The original Government bill can be found in Finnish here. The new Trademarks Act and related legislation is intended to take effect in the spring 2019, but the exact date has not yet been announced.
Åsa Krook was a member of the working group revising the Finnish trademark Act. 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’ attorneys listed in this alert or those with whom you usually work.