June 15, 2018
Once the new Trademarks Act is enacted, domestic Finnish trademarks and EU trademarks will function in parallel. The renewed EU Trade Mark Directive has been in effect since 2016, and work on reforming Finnish legislation on trademarks is now underway. The reform will combine the requirements set by the Directive and a number of national statutes applicable only to Finland.
Kolster's experts:“Most of the reforms are positive from the perspective of trademark holders. For instance, the cancellation of trademarks that have been unused for over five years will be simpler in the future, as this may be done by a simpler, administrative process. The legislative reform will affect domestic rights registered in Finland.”
As it now stands, if a trademark has been unused for five years, a lawsuit for its cancellation may be filed with the Market Court. Under new legislation, this process will be supplemented by a faster and less expensive administrative revocation and invalidation procedure. In the future, the Finnish Patent and Registration Office (PRH) will investigate and decide the invalidation or revocation of trademarks, with court proceedings retained as an alternative method.
Kolster's experts: “Under current legislation, the threshold to begin an arduous and costly cancellation process is high. Thanks to the reform, attempts to cancel a registered trademark will be more feasible and less risky to carry out.”
The reform will remove the current requirement that registered trademarks must be in a graphically represented visual or textual form. This change will, at least in theory, allow the registration of totally new kinds of non-traditional trademarks, such as tastes, moving images, holograms or sensations to the touch.
Kolster's experts: “After the legislative reform, trademarks must be represented in a clear and precise manner such as to be immediately distinguishable by anyone. This principle is known “what you see is what you get”. In the future, things such as moving images or sound files can be registered as trademarks. However, we do not yet possess the technology to unambiguously represent scents or tastes.”
Company names and trademarks are fairly closely connected. In practice, company names often form an obstacle to registering a trademark. This is caused especially by companies with a stated line of business as general commercial activities, even if the company name is not used in all industries it has been registered in. After the reform, it will be possible to cancel the use of a company name only in specific industries, instead of requesting for its full cancellation. This type of administrative cancellation will be filed with the PRH as a fast and inexpensive procedure.
The cancellation of an entire company name will also be possible with an administrative procedure. However, administrative cancellation will be possible only in cases where the company name or one of its stated industries have been unused for the past five years.
Kolster's experts: “Company names are not always used to the extent stated in the register. For example, a company name registered broadly under general commercial activities may operate only as a provider of cleaning services, but its name may still pose an obstacle to a trademark application related to foodstuffs. After the reform, the partial cancellation of a company name will be a useful tool to remove obstacles that hinder the registration of new trademarks.”
The classification of trademarks registered under a class heading will be specified to meet the EU classification practices. As it now stands, the Finnish trademark register includes trademarks whose type of goods and services covered is represented by a so-called class heading. In the future, the class headings will be interpreted based on their literal meaning, which means that the scope of the heading is not necessarily sufficient to cover all goods and services essential to the trademark. As a result, trademark holders will be required to provide more specified, amended classifications, most likely in connection with the renewing of trademarks.
This will improve the accuracy and transparency of the trademark register. The reform improves the legal security of users and their opportunities for oppositions on the basis of mere technicalities. It will also reduce the number of trademark conflicts. The amendment of classifications will affect particularly those trademarks that have been registered before October 2012 under so-called class headings.
Kolster's experts: “For example, the heading for class 15 is ‘Musical instruments’. This class also includes music stands, but because they are not literally stated in the class heading, the heading alone is not sufficient to protect them. If music stands are essential to the operations of the trademark holder, the company must actively amend its classification to include music stands after the new legislation enters into force.”
The Criminal Code of Finland will be amended to match the new trademark legislation, with particular effects on counterfeit products. Currently, only the infringement of domestic rights carries criminal liability, as the provision on intellectual property offences does not contain a reference to EU trademarks or Community designs. The protection of trademarks registered on the EU level is therefore weaker in terms of criminal liability compared with domestic rights, and the importers of counterfeit products escape penalties on penal grounds.
For instance, if a company has protected its steam mops only with EU trademarks and Community designs and overlooked domestic, Finnish rights, under current legislation, the importers of counterfeit products are committing no crime. This is set to change after the reform as the statutory definition of intellectual property offences will be amended to include Community designs and EU trademarks alongside domestic rights.
Kolster's experts: “For now, companies must remain vigilant of suspected intellectual property offences with counterfeit products and their import. After the reform, infringements of EU trademarks and Community designs will also carry criminal sanctions.”
In the future, companies should also remember to register trademarks in all of the essential colour combinations in order to ensure sufficient scope of protection. Trademarks that are registered in black and white will no longer be considered to cover all possible colour schemes of the mark.
Kolster's experts: “Many have already registered their trademarks as coloured versions. Still, companies should take note of the change in how the register will be interpreted in the future and ensure that all colour combinations essential to their trademark are registered and protected.”
The protection period of trademarks will remain as 10 years, but its validity will be calculated from the filing date instead of the current registration date. The change means that the date of renewing trademark protections will be earlier than previously.
Kolster's experts: “Lapses rarely occur in trademark renewals, as we always send our clients reminders of upcoming renewals well before the expiry date.”
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