Legal Alerts / 2 May 2019

The New Finnish Trademarks Act entered into force on 1 May 2019

The new Finnish Trademarks Act entered into force on 1 May 2019. With the new act, Finland finally implements the revised EU Trademark Directive, enforces the Singapore Treaty on the Law of Trademarks and brings the present trademark regulation originating substantially from 1964 up to date. The reform also introduces amendments to the related legislation such as the Finnish Company Names Act, the Criminal Code and the relevant procedural acts. The current provisions concerning collective marks and control marks are included in the new Trademarks Act, and the current Act on Collective Marks is annulled.                       

The new act brings certain changes to the current application and renewal proceedings, such as mandatory online filing of trademark and renewal applications. The new act also introduces new classification rules and restricts the scope of protection for black and white figurative trademarks. Under the new act, black and white trademarks will not cover all colour variations but only the version in black and white. The requirement for graphical representation of a trademark will be abandoned which enables the presentation of marks by using modern technology (e.g. motion marks and multimedia marks will be more easily registrable). Administrative procedures for the revocation and invalidation of trademarks is introduced as an alternative to civil court proceedings.

Other key amendments include the introduction of an exclusive right of a Finnish trademark owner in situations where counterfeit goods are caught in transit as well as the introduction of a clear provision criminalising the infringement of EU trademarks (typically counterfeits) and EU designs in order to improve the available means in the fight against counterfeit goods.

New classification provisions

The new act introduces new classification provisions pursuant to which trademark applicants are required to identify the goods and services for which they seek protection with sufficient clarity and precision. In other words, the 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 clearly covered by the literal meaning of the classification.

Simultaneously, the new act introduces a requirement to amend the classification of trademarks filed before 1 October 2012 if the classification uses Nice class headings (or the relevant class number if filed before 1996). As a result, the owners of trademark registrations must specify their list of goods and services by the renewal of the respective trademark registrations at the latest to ensure that they follow the new classification provisions. However, if the last date for the 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 will, unless specified, embrace only those goods and services that are covered by the literal interpretation of the said class headings.

The scope of protection of a trademark registration using class headings that has been filed before 1 October 2012 may be clearly narrowed down from the original scope of protection unless a trademark owner actively performs the amendments to the lists of goods and services required by the new act.

Actions recommended: Trademark owners are recommended to review all said trademark registrations and to assess whether the actual activity of the trademark owner is clearly covered by the literal meaning of the class heading, or whether the list of goods and/or services needs to be specified in order to ensure that the goods and services for which the trademark is in use continue to be covered by the exclusive right conferred by the trademark registration.

Introduction of administrative revocation and invalidation proceedings and non-use defence

The new act introduces 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 is initiated between the same parties, the proceedings at the Patent and Registration Office will be terminated.

Corresponding administrative procedures are also 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 during a five-year period. Since the Patent and Registration Office examines relative grounds for refusal ex officio, Finnish companies with a broad (partly undefined) field of business frequently constitute relative grounds for refusal for national trademark registrations despite operating in a totally different field. The presumably more efficient administrative procedures and the 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. The easier and more cost efficient administrative revocation proceedings are especially welcomed, and expected to increase the amount of revocation proceedings due to (partial) non-use of trademarks and trade names, which often forms an unnecessary bar to the registration of new trademark applications.

Actions recommended: Looking at this from a respondent’s perspective, due to the severe requirements relating to the collection of evidence of genuine use in recent case law, trademark owners are also recommended to continuously collect sufficient evidence of the genuine use of their trademarks pertaining to the (active) marketing and sale of respective goods and services.

For instance, the EUIPO surprisingly revoked McDonald’s well known ‘BIG MAC’ trademark due to the lack of genuine use in January this year. McDonald’s submitted printouts of European websites, posters, and packagings, and affidavits from company representatives attesting to “Big Mac” sales in Europe as evidence. The EUIPO said the affidavits needed to be supported by other types of evidence, and that the websites and other promotional materials did not provide that support. Among other things, McDonald’s was claimed to have failed to provide third-party evidence and the brochures did not provide any details regarding how they were circulated and whether they led to any actual or potential purchases.

The Act is available in Finnish here and in Swedish here.

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.

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