12.2.2020

Finnish Patent and Registration Office Renders First Trademark Non-Use Revocation Decision

One of the main trademark principles is ‘use it or lose it’. This means that a trademark registration can be revoked if the owner has not put its mark to genuine use in the past five (5) years in connection with the goods and services the mark was registered for.

The new Finnish Trademark Act, which entered into force on 1 May 2019, introduced a brand new possibility to use a post-opposition administrative revocation procedure by filing a non-use action before the Finnish Patent and Registration Office.

The Office has now rendered its first trademark revocation decision in a case where our IP team successfully prosecuted the matter on behalf of a US client and the Office revoked the mark for non-use.

As applicants can now choose to file such actions before either the Finnish Market Court or the Office, here’s our take on the pros and cons when choosing the right forum.

Costs

The official fee for filing an application for revocation before the Office is EUR 400. If you decide to file such action before the Finnish Market Court, you need to pay official fee of EUR 2,050.

Even though the Office’s fee is much lower compared to the court’s fee, the downside is that the applicant cannot claim its own costs from the counterparty if the action is filed before the Office. In court proceedings, by contrast, the applicant can claim that the counterparty needs to pay both the applicant’s legal fees and the court’s official fee.

Length of the Proceedings

It is still too early to say which forum renders faster rulings. If the proprietor of a mark subject to non-use claim remains passive or admits the claim, no major difference exists when comparing the time it takes the Office or the Market Court to handle the case. However, if the owner of the mark resides outside Finland, the service of the non-use claim to the proprietor is far easier through the Office.

As regards actual proceedings, the Office is more willing to grant extensions to submit statements compared to the court. The office grants extensions of 2 months upon a simple request, and another 2 months with grounds. This usually leads to very long processing times if both parties file the maximum extension requests.

When looking at possibilities to appeal, the Office’s rulings can be appealed to the Market Court. If the applicant decides to file the action directly before the court, the appeal must be filed before the Supreme Court of Finland, which requires leave to appeal. Such leave is granted in approximately 7% of cases, which means that the Market Court’s ruling becomes final in most cases.

Conclusions

If it is more or less clear that the proprietor of the mark has not used its mark in the past five (5) years, it seems to be more efficient to file the claim before the Office. This applies especially if the proprietor of the mark resides outside Finland.

However, if the matter is more complex, requires witnesses to be heard or relates to a pending infringement case, it is likely better to file the claim to the Market Court.

Latest references

We successfully represented BMW in an exceptionally long dispute over whether the spare rims sold by the defendant and the hub caps included in them infringed BMW’s trademark and design rights. The Market Court found that the sign used by the defendant caused a likelihood of confusion with BMW’s trademarks. The defendant had used the sign on the hub caps and in the marketing of the hub caps and rims, leading the Market Court to find that the defendant had infringed BMW’s trademark rights. The defendant admitted to infringing BMW’s Community design but denied the related injunction claim. However, the Market Court found that there was no particular reason to refrain from issuing an injunction. The Market Court prohibited the defendant from continuing to infringe BMW’s trademarks and Community design and ordered the defendant to alter or destroy the products and marketing materials that infringed BMW’s rights. Furthermore, the Market Court ordered the defendant to pay BMW EUR 70,000 in reasonable compensation and EUR 80,000 in damages for the trademark infringements, as well as EUR 7,000 in reasonable compensation and EUR 8,000 in damages for the design right infringement. The amounts can be considered exceptionally high in Finland. Additionally, the Market Court ordered the defendant to pay a significant portion of BMW’s legal costs with interest on late payment. In its decision of 11 March 2025, the Supreme Court of Finland did not grant the defendant leave to appeal, and also decided that there was no need to seek a preliminary ruling from the Court of Justice of the European Union. Thus, the Market Court’s judgements (MAO:494/18 and 517/2023) are final. In addition to the main dispute, BMW demanded in a separate proceeding that one of the defendant’s trademark registrations be revoked. A total of three separate legal proceedings were conducted in the Market Court regarding the revocation. The defendant’s trademark registration was ultimately revoked.
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We are acting as legal advisor to Piippo Plc in the sale of their bale netwrap and baler twine machines, related assets, and trademarks used in Piippo’s business to Portuguese Cotesi S.A. The sale of assets will be carried out in two phases and the final completion of the transaction is expected to occur during the first quarter of 2026. Piippo Oyj’s core business is baling nets and twine and it is one of the leading suppliers in the industry globally. The company’s global distribution network covers more than 40 countries. The company’s shares are listed on the First North Growth Market Finland operated by Nasdaq Helsinki Oy. Founded in 1967, Cotesi is one of the world’s leading producers of synthetic and natural twines, nets and ropes, with operations in Europe, North America and South America and its main production plant in Vila Nova de Gaia, Portugal.
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