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.
22.1.2019
What Is Happening to Black & White Trade Marks in Finland?
Sakari Salonen
Related services
Tags
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.
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:
Latest insights
Article published 17.10.2025 – Intellectual Property
Is your IP safe? Eight real-life tips to avoid costly mistakes
Article published 13.3.2024 – Intellectual Property
Changed rules on green claims – does your marketing contain claims about environmental objectives or emissions compensation?
Article published 7.12.2023 – Data & Technology
Agreements define data sharing and re-use
Article published 8.11.2023 – Data & Technology
Prepare for the new wave of digital regulation
Lauri Laatunen & Janne Koivisto
Hilma-Karoliina Rozell & Karla Kallela
Kim Parviainen, Eija Warma-Lehtinen & Sakari Salonen
Latest references
Life Finland – Administration of bankruptcy estate
Life Finland Oy, a retailer of natural products, other health-related products and cosmetics, filed for bankruptcy on its own initiative in June 2025, and our attorney, counsel Elina Pesonen was appointed administrator of the bankruptcy estate. Life Finland Oy was part of the international Life Group, and its parent company Life Europe AB was declared bankrupt in Sweden in June 2025. When declared bankrupt, Life Finland Oy had over 30 operational stores and almost 170 employees across Finland. In addition to the premises of the operational stores, the company had several other leased premises, such as retail premises it was vacating as well as office and warehouse spaces. The bankruptcy estate organised clearance sales in all of the company’s stores. The shutdown of the stores and the clearance sales were efficiently carried out in approximately two weeks in cooperation with the company’s country manager, regional managers and sales staff. The clearance sales yielded a significant liquidation result, and consumers bought nearly the entire inventory. The administration of the bankruptcy estate has required expertise in many areas. The proceedings have dealt with specialised issues such as cash pooling arrangements, intellectual property, franchising agreements, employment relationships and consumer creditors. In addition, the proceedings are notably international, as the estate administrator has organised the shutdown of operations and the liquidation of assets in close cooperation with the estate administrators of the Swedish Group companies. The cooperation has included, among other things, exploring opportunities for selling the business, the sale of intangible rights and the coordination of intra-group agreements.
Case published 9.12.2025
BMW AG – Enforcement of BMW’s trademark and design rights
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.
Case published 9.5.2025
DNA – Global brand portfolio management and IP enforcement
We are advising DNA Plc in brand protection and intellectual property enforcement matters globally. Our intellectual property team manages DNA’s global trademark portfolio, including registration, prosecution, opposition and enforcement. We also advise DNA in questions concerning consumer and marketing law, unfair competition, social media, domain names and cybersquatting. DNA Plc is one of Finland’s leading telecommunication companies. DNA offers connections, services and devices for homes and workplaces, contributing to the digitalisation of society. The company has approximately 3.7 million subscriptions in its fixed and mobile communications networks. In 2024, DNA’s total revenue was EUR 1,100 million, and the company employs about 1,600 people around Finland. DNA is part of Telenor Group.
Case published 7.5.2025
Piippo – Sale of bale netwrap and baler twine machines and certain trademarks
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.
Case published 17.4.2025