June 15, 2018
Ojala & Kilpimaa:“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.”
Trademark infringements and anti-counterfeiting measures are a speciality of Kolster IP lawyer Maria Ojala.
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.
Ojala & Kilpimaa:“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.”
Joose Kilpimaa, Director of Trademarks at Kolster, is part of the Non-Traditional Trademarks Committee.
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.
Ojala & Kilpimaa: “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.
Ojala & Kilpimaa: “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.”
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