News in the IPR field

Trade mark strategies, emerging trends and the Finnish office´s unusual registry of well-known trade marks

26.11.2010

This interview by James Nurton was originally published in Alicante News (OHIM) in November 2010. Trade mark agent Kristiina Kaislisto, Kolster Oy Ab, tells about trade mark strategies, emerging trends and the Finnish office’s unusual registry of well-known trade marks.

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When did you start working in trade marks?

I have worked as a trade mark agent at Kolster since 1991. I did not choose trade marks; trade marks chose me! I started as a summer clerk in 1990, I found it very challenging and have stayed here ever since.

The most interesting thing for me is to work with trade mark owners and help them set up strategies to protect their marks.

I am a trade mark agent so I deal mostly with filings and oppositions, in particular at OHIM. National filings in Finland have gone down in recent years, mainly because of the popularity of the Community trade mark. Personally, I hardly do any Finnish filings at the moment, though I do some oppositions. About 80% of my work involves either the CTM or Madrid Protocol.

What do you think of the CTM?
I think it works well. Practice is changing all the time so we have to adapt to that. But the system works smoothly, and we are pleased in particular with e-filings.

The examination rules and judgement of trade marks at the Office does change. For example, the assessment of classification of goods and services and of distinctiveness is very strict, in particular regarding marketing slogans – more strict than it used to be. It’s a change that clients have had to adapt to. In some ways it would be better to have consistency over time but we are seeing the same trend in Finland.

It's good that the CTM has become cheaper as we all know. That has been good for clients especially in these economic times. The language regime at OHIM also works well – it means we can file applications in Finnish or Swedish.

So overall we are quite pleased with OHIM, but of course you can always improve!

How many CTMs do you file?
This year 2010 we have filed about 110 CTMs so far. In 2009 we filed fewer due to the economy. I would say at the moment the economy looks a bit better and we hope it stays that way.

The most interesting and unusual mark I have filed was for registration of the colour orange in Finland for scissors. It is hard to register colours as a trade mark and the trade mark protection is very narrow. The registration is for a company called Fiskars and it is very famous in Finland and also abroad.

What about the Community design?
We have some experience of it. Personally I have filed some for my clients. It works well and is a very quick way to get a registration.

What do you think about the genuine use of CTMs?
It’s about time we got a clear decision from the court as to what kind of use and where constitutes genuine use. There are very convincing arguments both ways, and there have only been a few cases regarding use of a trade mark. In Finland, we don’t have the concept of genuine use, only use, so it would be very good to have some clarity on this question.

What are the main developments in Finland?
Finnish law is harmonised with the CTM and the Madrid Protocol system so we don’t expect any big changes. There are no big issues before the courts at the moment.

One unusual thing in Finland is that the Finnish Patent Office has started to keep an unofficial register of well-known trade marks in Finland. But it is totally unofficial. The validity of registrations has not yet been challenged in court either so they have no legal status.

So we think the benefit of these marks on the register has to be very limited. There are probably less than 100 that have been registered so far: it requires a lot of material evidence of use, but it is not clear how much or what kind of material. That makes applying quite expensive.

We have done filings but it’s not something we normally recommend to clients.

What are the big challenges in trade marks?
Due to the changes in the economy, trade mark agents and lawyers have to cover a much wider range of IP rights than before. More of our work involves not filing trade mark applications as such but understanding branding as a marketing tool. So the field is broader and the work is more strategic.

In an ideal world that means we hope to be involved with the client much earlier. Unfortunately that doesn’t always happen and some clients leave it too late to go to a trade mark agent.

How big is your firm?
We are the oldest trade mark agency in Finland, going back some 135 years. We have about 170 to 180 staff. Of those, we have nine lawyers and agents in the trade mark team, as well as about 15 support staff. Our business is to offer consulting services in IP, particularly industrial property rights. As you can see from these figures our patent team is the larger one.

We have a mixture of very different kinds of clients from all business areas, particularly pharmaceuticals. We have clients all over the world, notably China and the US. We have also historically worked with a lot of firms in Russia and the former Soviet Union. But lately we are focusing more on domestic clients. Because of the international systems available now, big companies have their own contacts and take advantage of the systems in place. That means we can focus more on providing strategic services to domestic clients.

What will be the challenges in the future?
Trade mark owners have to protect their marks against piracy. It’s getting harder and they have to take advantage of the whole scope of IP rights, including designs, copyright and domain names. For example, we now have a dedicated domain name team in the firm.