Make sure your trademarks are up-to-date


June 28, 2019

The reformed trademark law is now in force in Finland and brings with it changes for both existing trademark registrations and new trademark applications. Kolster’s Authorized Trademark Attorney, Hilkka Kerminen, has advice on the particular aspects of this amendment that trademark holders should consider. 

The updated Trademarks Act entered into force in early May 2019 with the purpose of harmonising Finland’s approach with EU trademark legislation. This move also has some practical implications. It will no longer always be possible to simply renew an existing registered trademark. 

“The date on which a trademark application is filed currently affects whether all the existing products and services registered under that trademark will continue to be covered. These changes will particularly affect trademarks previously filed under class numbers, class headings, or, for example, with an "all goods” reference”, says Kolster’s Trademark Attorney, Hilkka Kerminen. 

From the perspective of new trademark applicants, the most visible change is the abolishment of the requirement regarding graphical representation. This change will make it possible to register completely new kinds of trademarks, including those covering holograms, multimedia content, and moving images.

“This adheres to the general principles of modern trademark registration, whereby ‘you get what you apply for’”, Hilkka notes. 

Remember to update your registration

The legal reform also provides an opportunity to retroactively specify the protected list of goods and services relevant to the scope of trademark registrations. The date by which any updated specifications must be submitted for trademarks registered before 1 January 2014 is the same as the date on which you make your first request for a trademark renewal following the change to the law. It is important to submit such updates, as any failure to specify a list of goods and services may reduce the scope of protection of the trademark. 

Under the new trademark law, any goods and services covered by registrations should be identified in such a way that the list of goods and services clearly indicates all the individual goods and services covered by the registration and those intended to be permanently covered within the scope of the registration. 

Hilkka strongly recommends that brand owners make such specifications for certain classes of services and goods. The mere registration of goods or services under class numbers and class headings, or under the 'all goods' references, only covers the goods and services specifically included in the class headings that were valid at the time the trademark application was made.

“For example, the class heading of Class 35 covers ‘advertising, business management, business administration, office functions’. However, a wide range of services, such as retail, wholesale or e-commerce, are included in this class.”

If trademarks registered under a class heading of Class 35 are not specified when trademarks are renewed, they only cover the above four sections of the class heading – from advertising to office functions.

“The trademark is still valid, but its coverage does not include, for example, the company's wholesale and retail services unless they have been specified at the time of registration,” Hilkka goes on to explain. 

Automatic updates are not enough 

It is possible to specify the classifications of old trademark registrations at any time, as long as such updates are submitted no later than during the submission of the next application for renewal following the change to the law. If the updated specifications are not made in time, the registration renewal will ensure the trademark remains valid, but will also result in the registration either continuing in its pre-existing form or requiring the application of an automatic specification by the National Board of Patents and Registration (NBPR).

“For the most part, this automatic specification only covers the class heading under which the trademark application was made. Consequently, there is a risk the trademark will no longer cover all the products and services essential to a company’s operations. It can also be the case that a trademark continues to include goods and services the trademark holder no longer even has. This demonstrates the importance of keeping trademark specifications up-to-date”, Hilkka notes.

Specifying the lists of goods and services demonstrates whether the protection afforded by registrations corresponds to the holder’s current needs. For example, if a trademark has been applied and registered in a certain class for decades, it no longer necessarily covers all the new products and services developed in that class over the years. 

“Brand coverage for tech products registered in the 1970s does not necessarily include all the newer products, such as flash drives. In order to ensure that protection of all the goods and services important to your business will continue to be covered by your trademarks, I advise you to check the specificity of your registration with a trademark attorney and, if necessary, to extend your trademark protection through new applications covering your current protection needs”, Hilkka suggests.   

Working together with an expert is to the holder’s advantage

Payment of renewal fees alone has previously been enough to maintain a valid trademark registration. This is still possible after the change in the law, but the ability to specify the classification of goods and services for registrations made after the new trademark law entered into force is a separate process.

“Many trademark holders use third parties to handle the payment of annual patent fees or the renewal of trademarks on their behalf. These companies will continue to be able to maintain registrations, but will not be able to make adjustments to the specifications of the goods and services or make other necessary changes. This requires a legal representative with expertise in the sector or sectors in question”, Hilkka Kerminen explains.

When specifying the classification of goods and services in order to meet the needs of a brand both now and in the future, we must first look at their past. In order to determine what kind of protection and registration will be required after the change to the law, we need to establish which kinds of goods and services are covered by the relevant international classification at the time the trademark application was made.

“An attorney needs basic knowledge of what is actually included in the coverage of a registered product or service and what the trademark covered at the time the trademark application was filed. We then check when the application was filed and make sure that the required characteristics are still covered by the scope of the registration and under the relevant class heading. We may also establish whether the trademark holder needs to extend the trademark protection by submitting new applications”, says Hilkka.

To find out more about other requirements introduced by the trademark reform, the new trademark age, and how to use your trademark correctly, check out our blog:

The new Finnish Trademarks Act became effective on 1 May 2019 ─ classifications must be revised retroactively

This is how you can make the most out of your trademark

What will happen to trademarks, design rights and patents with Brexit?

Contact us

Hilkka Kerminen
+358 40 6326325