Finland takes a step forward in its intellectual property legislation by renewing its Trademarks Act. The outdated Trademarks Act enforced for over 30 years is to be replaced by a new Trademarks Act that is applied as of 1 May 2019.
The changes introduced by the new Act have a significant effect on how trademarks are filed, processed, revoked and invalidated – just to name a few.
Here is our take on the key changes to be aware of in order for you to protect your trademarks from here on out.
No requirements for graphical representation
The new Act enables the use of a wide range of new types of trademarks. Trademarks are no longer required to be graphically represented. Instead, a trademark can be described in a variety of technical forms. This change opens up a whole new world regarding the types of trademarks that can be registered and enables the use of, for example, mobile marks and multimedia marks.
As a result, only technology is the limit as long as the mark is filed in a manner that is clear, precise and understandable. In practice, this means that the mark should be filed in a way that both the authorities and public can define the mark and its scope of protection.
Black-and-white marks are no longer considered to cover all color variations
Once the new Act steps in, characters displayed in black and white are no longer considered to cover all color variations. Instead, they only cover the black and white format shown.
Not to worry, this change applies only to trademarks registered after the new Act has entered into force. Any black-and-white trademark applications filed by the end of April 2019 will still be seen to cover all color variations.
The classification of trademarks registered before 2014 must be specified
Under the new Act, applicants must clearly identify and sufficiently clarify the applicable goods and services covered by the trademark.
In order to ensure that all trademark classifications are clearly set out, holders of registered trademarks filed before 1 January 2014 are given the opportunity to specify goods and services covered by the registration in order for such old registrations to comply with the new classification rules. The list of goods and services covered should be specified at the next renewal of the trademark, the latest. If no specification is made, as a main rule, the list of goods and services is considered to cover only the goods and services listed in the actual class heading wording. Certain exceptions apply to trademarks filed within 1 October 2012 and 31 December 2013.
The requirement is meant to clarify a system which has, in previous years, been difficult to interpret without in-depth knowledge of trademark law. Until October 2012, the scope of protection of a registered trademark was interpreted to cover all the goods or services included in the classification category title at the time of application. However, the so called IP Translator Case (C-307/10) of the EU Court of Justice changed this interpretation, leading to a situation where the scope of protection differed based on the time when the mark was filed.
Companies must be able to show proof of their genuine use of trademarks
The new Act also contains more specific provisions on what is considered as genuine use of a trademark and for what period of time you should be able to prove it.
Holders of a previous trademark, EU trademark, trade name and auxiliary firm-name should upon request be able to prove the genuine use of a mark etc. for the 5 years preceding the date of application for a declaration of invalidity. Another option is to prove that there has been a valid reason for non-use. The holder of a trademark and EU trademark must also be able to prove genuine use in prohibition issues.
We recommend that companies ensure they have proof of genuine use even if there is no application for invalidity declaration against you. It is easier to collect proof during the actual years of use, rather than attempt to dig up proof retrospectively.
New procedures for the revocation and invalidation of trademarks and trade names
Once the new Act is applied, companies can choose whether to submit a trademark or trade name revocation and invalidation action with the Finnish Patent and Registration Office or with the Market Court. Previously only the Market Court could invalidate or revoke a trademark or trade name registration. The aim of the reform is to enable an efficient and fast administrative procedure.
We are happy to discuss the topic further and will keep you updated on any developments regarding intellectual property legislation and the new Finnish Trademarks Act.