22/01/2019

What Is Happening to Black & White Trade Marks in Finland?

I’ve been asked multiple times whether a logo trade mark should be registered in black & white or colour. This question comes up, because trade mark owners want the best scope of protection they can get.

To date, the answer to this question has been that when filing a Finnish trade mark, a black & white logo mark covers all colours. However, if you decide to file an EU trade mark, then you get what you have filed.

However, my answer is about to change, as the new Finnish Trademark Act is entering into force in the spring of 2019.

New Rule in Finland

Finnish trade mark law will undergo a major reform at the beginning of 2019. In this connection Finland has decided to abandon the ’black & white covers all’ approach and adopt the ’what you file for is what you get’ approach.

This means that existing Finnish black & white logo trade mark registrations or applications filed before the new Act enters into force will continue to cover all colour variations of the mark in question. However, new black & white logo trade marks filed after the new Act has entered into force will cover only the black and white version of the mark.

Use It or Lose It

One important rule to remember is that if you have not used your trade mark in its registered form within the last 5 years, third parties can invalidate your trade mark due to non-use.

If you file a black & white logo trade mark in Finland in the future, but you use your logo in some colour variation, you might eventually end up in a situation where your competitor can invalidate your trade mark registration as you have not used it in black & white form. To avoid this kind of situation, you should also protect your logo in colour in future.

Black & white trademark

Enforcement Problems

If you file a black & white logo mark after the new Act has entered into force and then try to enforce it against a competitor who is using a similar kind of mark in colour, you may have hard time proving that the colour mark infringes your black & white trade mark registration.

The problem is that use of a prominent colour logo may not be considered confusingly similar to an earlier black & white logo registration.

Conclusions

After the new Act has entered into force, you need to take the following things into account in Finland:

  1. When applying for a Finnish logo trade mark, file your trade mark in the colour in which you intend to you use it.
  2. Depending on the logo design in question, it still might be a good idea to file a black & white logo mark in addition to colour version.
  3. If you have older black & white logo marks registered or applied for before the new Act enters into force, you are all set and don’t need to update your registrations at least where colour is concerned.
  4. When enforcing your black & white logo marks, you need to check whether they were registered or applied for before or after the new Act. The scope of protection is very different, and you don’t want to have any surprises here.