New Provisions Introduced to the Finnish Trade Names Act – Trademark Applicants Benefit
When the Finnish Trademarks Act was revised in 2019, amendments were also made to the Finnish Trade Name Act. Certain provisions were set to come into force after a two-year transition period, which has now passed.
Finnish trade names can prevent the registration of not only other trade names but also trademarks as well. Starting from 1 May 2021, it is now possible to request for a problematic trade name to be revoked either in part or in its entirety in a specific administrative process. The key requirement for successful revocation is that the trade name has not been used during the past five years and that the trade name proprietor can prove no justifiable reason for the non-use.
The new mechanism will be welcomed by both trade name and trademark applicants in Finland, as old unused trade names can be more easily removed from the national register.
Farewell to companies operating in “all fields of business”?
One of the underlying motivations for the legislative amendments is to tackle the problem of companies being able to register trade names in a so-called general field of business or, in other words, announcing that they engage in “all legal business operations”. The new provisions make trade names registered in such an overly extensive field of business more susceptible to revocation. As such, the transition period was originally introduced to allow companies time to specify their registered field of business and to bring it in line with the actual field of business in which they use their trade name.
Since the Finnish Patent and Registration Office examines relative grounds for refusal ex officio, the trade names of Finnish companies with a broad (partly undefined) field of business would frequently constitute relative grounds for refusal for national trademark registrations despite these companies operating in a totally different field than the trademark applicant. Now trade names that are registered for a field of business that is too broad in scope can be partially revoked.
Lighter administrative proceedings for revocation of unused trade names
From a trademark applicant’s perspective, a particularly favourable amendment is the possibility to request a partial revocation in a more simplified administrative process. Previously, a trade name could be revoked only through court proceedings on the grounds specified in the Trade Names Act. This was not always a feasible option for trademark applicants, since revocation proceedings at the Market Court are often costly and time-consuming.
From May 2021 onwards, any party who may “suffer harm” due to an unused trade name or an extensive field of business can choose to request the partial or total revocation of a trade name in lighter and more cost-efficient administrative proceedings at the Finnish Patent and Registration Office as an alternative to court proceedings. Revocation can, however, be requested at the Finnish Patent and Registration Office only on non-use grounds. If revocation is requested on other grounds specified in the Trade Names Act, the claim must be raised in the Market Court.
The Finnish Patent and Registration Office does not charge a fee for the revocation process, whereas initiating a revocation action at the Market Court requires the payment of a EUR 2,050 court fee.
Going forward, we anticipate for trade names to be frequently involved in disputes initiated by trademark applicants. Partial revocation is a new option particularly for companies seeking to establish their brand in the relevant Finnish market, especially in situations where an existing trade name serves as an obstacle for the registration of a trademark. We hope that the Finnish Patent and Registration Office can rise to the occasion and manage the revocation processes more effectively than trademark oppositions, which currently suffer from long processing times.
Borenius’ lawyers are available to assist in addressing any questions you may have regarding the legislative amendments.