Finnish trademark law will undergo a major reform at the beginning of 2019 when the new Finnish Trademarks Act enters into force. The government proposal for the new Act was introduced to parliament on 18 October 2018.
31.10.2018
New Finnish Trademarks Act – What’s Changing?
Nina Mikander & Sakari Salonen
Related services
Tags
The new legislation replaces the previous, fairly inconsistent and outdated Trademarks Act from the 1960s, implements the revised Trademark Directive and enforces the Singapore Treaty on the Law of Trademarks. The new Act aims to achieve a major shift towards a more coherent and uniform national legal framework in compliance with European Union laws.
The reformed Act introduces numerous substantive and procedural changes, and we cover the key changes below.
Administrative Procedure for the Revocation and Invalidation of Trademarks and Trade Names
To date, trademark revocation and invalidation claims after the opposition period have had to be filed to the Market Court. The same applies to trade names after the trade name is registered. The new Act introduces a lean and cost-efficient post-opposition (trademarks)/post-registration (trade names) administrative revocation procedure operated by the Finnish Patent and Registration Office. The claimant can choose whether to file the revocation or invalidation action to the Office or the Market Court.
To avoid parallel proceedings, the new Act states that the proceedings before the Office must be terminated if the claimant has filed the same action against the same party in the Market Court.
An action to invalidate a trade name before the Office will be available only in five-year non-use cases. The partial invalidation of a trade name will also become possible, which will help companies to resolve collisions between trademarks and trade names more easily.
New Classification Rules
The Court of Justice of the European Union’s decision in the IP Translator case (C-307/10) changed the interpretation of the scope of protection of registered trademarks. This case led to a rather strange situation where the scope of protection of trademarks varies depending on the date of filing of the trademark.
The new Act will try to clarify this situation by granting trademark owners a possibility to specify registered trademarks’ list of goods and services that currently include a full Nice class heading and that were filed before 1 January 2014. The deadline to file this specification is the first renewal of a trademark registration after the new Act has entered into force. If no specification is filed, the scope of protection of such trademarks will automatically cover only the literal meaning of the class heading in question.
However, the above does not apply to trademarks that were filed between 1 October 2012 and 31 December 2013, as the Office will make the specification ex officio if the owner fails to do so. Owners of international trademark registrations with class headings designating Finland that were filed before 1 October 2012 must also comply with the specification requirement or their scope of protection will be limited.
Waiver of the Graphical representation and Black & White Marks
The new Act includes a waiver of the graphical representation requirement for a trademark. After the new Act has entered into force, a trademark application must be filed in a manner that it can be represented in a trademark register so that both authorities and public can define the mark and its scope of protection. In practice, this will make it possible to file new types of trademarks, such as motion and multimedia marks.
As to black and white trademark registrations, existing trademark registration or application filed before the new Act enters into force continue to cover all colour variations of the mark in question. However, new black and white trademarks filed after the new Act has entered into force will cover only the black and white versions of the mark.
Non-Use Claims in Opposition Proceedings
To date, if an opposition is filed against a trademark registration and the trademark in which the opposition is based on has not been used in whole or in part for the last five years, the trademark applicant has had to file a trademark invalidation action before the Market Court as a defence action.
The new Act introduces new rules according to which the opponent must prove the actual use of the earlier mark if requested by the trademark applicant. If the opponent is not able to prove this use or cannot provide any well-grounded reason for the non-use, the opposition will be rejected.
Industrial Property Offence
The Supreme Court of Finland ruled in 2018 (KKO 2018:36) that the infringement of European Union Trade Marks (EUTM) and registered Community designs (RCD) does not constitute a criminal offence in Finland. This error in law led to a situation that the only way to take action against infringement of EUTM and RCD is to file a civil infringement action before the Finnish Market Court. The good news is that the new act will rectify the situation by criminalising the infringement of both EUTMs and RCDs. This will be of utmost importance especially in anti-counterfeiting actions, as the lack of a criminal action option increases the right owner’s enforcement costs substantially.
-
Head of IP Prosecution, European Trademark and Design Attorney
+358 40 093 0778 nina.mikander@castren.fi
Latest news
Latest references
WithSecure – Sale of open source data collection product and business
We advised WithSecure Oyj in the sale of its open source data collection product and business to Patria Oyj. The divested business combining software and services falls outside WithSecure’s current strategy. Through the sale, WithSecure sharpens its focus on the Elements portfolio. WithSecure is a global cyber security company (listed on NASDAQ OMX Helsinki) with more than 35 years of industry experience. WithSecure offers partners flexible commercial models, ensuring mutual success across the dynamic cyber security landscape. Patria is an international company in the defence and security industry offering defence, security and aviation life cycle support services and technology solutions. As a result of the transaction, Patria will open a new office in Oulu and 10 WithSecure experts currently working in the business area will join Patria.
Case published 30.9.2024
A. Ahlström – ESG advisory and corporate sustainability due diligence process planning
We advised A. Ahlström in establishing a corporate sustainability due diligence process plan which incorporates best practices and tailored solutions based on our expertise within relevant business sectors. Our comprehensive ESG offering also included tailored training for members of the investment team and management team and the board of directors of several portfolio companies. ‘The ESG team at Castrén & Snellman provided us with legal and practical advice around the ESG regulatory tsunami that we need to incorporate in our ESG work,’ comments Camilla Sågbom, Director, Sustainability and Communications, at A. Ahlström Oy. A. Ahlström is a family-owned industrial company, developing leading global specialist positions in Forest & Fiber and Environmental technology sectors.
Case published 5.9.2024
Vapaus Bikes Finland – Series A funding round
We represented Vapaus Bikes Finland Oy, a company offering employee benefit bikes, in its international EUR 10 million Series A funding round. The investors behind the funding are private equity investors Shift4Good and Superhero Capital Ltd as well as Tesi together with the European Guarantee Fund of the European Investment Bank. The equity-based funding will support the company’s international expansion, software development, platform automation, and the growth of its concept for the second-hand market of bikes. Vapaus Bikes Finland is at the forefront of sustainable mobility services and has been a pioneer in the Employee Benefit Bikes sector since late 2020. It has been ranked among Finland’s fastest growing companies. Shift4Good is an impact venture capital fund focused on the decarbonisation of the transportation sector. Tesi (officially Finnish Industry Investment Ltd) is a state-owned, market-driven investment company that invests in venture capital and private equity funds and directly in Finnish startups and growth companies.
Case published 21.8.2024
City of Rovaniemi – Former employees ordered to pay damages in an investment decision matter
We successfully acted for the City of Rovaniemi in a matter concerning offence in public office and damages claims in relation to a significant investment decision made by the city. The defendants were the city’s former municipal corporate officer, who was in an employment relationship, and a city treasurer, who was in a public-service employment relationship and acted as the supervisor of the municipal corporate officer. The criminal matter related to the City Board’s decision to invest EUR 2 million of the city’s funds in bonds offered by a newly established investment company in accordance with a decision prepared by the defendants. A significant part of the company’s operations involved quick loan business. The main legal question in the matter was whether the investment of public funds constitutes an exercise of public authority and whether regulation on offences in public office therefore becomes applicable even to a person in an employment relationship. The municipal corporate officer in an employment relationship was charged with aggravated abuse of public office based on her negligence in the preparation and presentation of the investment decision as well as based on a conflict of interest due to the fact that she had invested her own money in a company that received funding from the investment target presented to the City Board. The charges of an offence in public office against the city treasurer concerned his position as the supervisor and reporter of the city’s investment activities. He was also involved in the preparation and presentation of the City Board’s decision. The processing of the matter started in the District Court of Lapland in June 2022. In its judgment given in August 2022, the District Court stated, based among other things on our argumentation, that the investment of public funds constitutes an exercise of public authority and that regulation on offences in public office can therefore be applied to the municipal corporate officer. The District Court deemed that the conduct of the former municipal corporate officer fulfils the characteristics of abuse of public office and that the conduct of the former city treasurer fulfils the characteristics of violation of official duty with respect to the preparation of the investment decision, but the right to bring charges had become time-barred. Punishments could therefore not be imposed on the defendants, but the defendants were ordered to jointly and severally pay the city approximately EUR 114,000 in damages plus interest for late payment. The city treasurer’s share of the amount was 10%. The prosecutor accepted the judgment but the other parties appealed it to the Court of Appeal. Acting for the city, we pursued claims for both punishment and damages in the Court of Appeal. The Rovaniemi Court of Appeal processed the matter in November and December 2023. In its judgment given in June 2024, the Court of Appeal upheld the District Court’s judgment with respect to the abuse of public office and violation of official duty. The Court of Appeal deemed that the municipal corporate officer had failed in her duty to declare the conflict of interest. In addition, she had failed in her duty to ensure that the prepared decision was in compliance with the city’s investment guidelines and that it had been properly put out to tender. The Court of Appeal also found that the text of the investment proposal was insufficient and misleading and that the municipal corporate officer’s conduct was intentional. As regards the city treasurer, the Court of Appeal held that he had failed in his duty to ensure that the investment proposal to the City Board complied with the investment guidelines, that the presentation was not misleading and that risks were taken into account as required by the investment guidelines. With the judgement, the Court of Appeal took a clear position that abuse in public offices and when exercising public authority is not acceptable. The judgment is also significant as it declares that investing public funds constitutes an exercise of public authority and that the liability for acts in office therefore becomes applicable even to persons in employment relationships. In addition, a key question for the Court of Appeal to assess was defining the amount of economic damage in a matter related to investment activities. The Court of Appeal held based on our arguments that the conduct of the municipal corporate officer and the city treasurer had caused damage to the city. The Court of Appeal increased the amount of damages to EUR 210,000 with the city treasurer’s share limited to 10%. The amount was increased because the Court of Appeal deemed that the city had suffered damage not only in terms of the loss of capital but also in terms of the loss of estimated return on investment. The judgement is not final.
Case published 21.8.2024