Finnish Trade Mark Reforms – What You Need To Know
By Robert Ljungberg, Head of Nordic Practice, Helsinki
If you have a global brand portfolio, or one where Finland is an important territory within your branding strategy, then it will be of interest to you that a new Finnish Trade Mark Act has recently been introduced.
The new Act, which came into force on 1 May 2019, brings in a number of key changes, and here I list five of the most important updates.
1) A new revocation and invalidation procedure
A new administrative revocation and invalidation procedure for trade marks and trade names has been introduced for both contentious and non-contentious matters at the Finnish Patent and Registration Office (PRH). The administrative cost for this is €400.
It is also now possible to obtain partial revocation of trade names. Currently, some companies are registered for “all lawful business activities”, which has created barriers to other companies in different business areas registering similar marks, so this will create a solution to this issue.
2) Move to online applications
The PRH is now only accepting trade mark applications filed online (so those filed on paper or email will be rejected, unless these are filed for special reasons).
To coincide with this change, the PRH has introduced two new online platforms to manage online applications. The first platform allows users to modify details on a registered trade mark, file oppositions, apply for revocations, as well some other functions. The second site allows trade mark holders to respond to office actions, complete trade mark applications and cancel applications.
3) Introduction of 5-year non-use rule in oppositions
The new system brings in a 5-year non-use rule with opponents having to prove the actual use of an earlier mark if the trade mark applicants request this. This brings the Finnish Act in line with European Union Intellectual Property Office (EUIPO) procedure.
4) Option to specify goods and services on pre-2014 applications
The new Act brings in the option for trade mark owners to specify a list of goods and services on a registered trade mark filed before 1 January 2014. The deadline for filing this specification is the first renewal date of a registration after the Act came into force. This also brings Finnish procedure in line with EUIPO practice.
5) Graphic representation no longer required
It is now no longer a requirement to provide a graphic representation of your trade mark when filing an application, i.e. an application for a sound, or a smell, needs no graphic representation.
Overall the Act modernises and streamlines Finnish procedure in line with developments in recent years at the EUIPO and other major trade mark offices, and I believe this will make the system easier to use and more efficient, which can only be a positive change for trade mark holders and trade mark practitioners alike.
Review your portfolio now
To check if the new Finland trade mark reforms will have implications for your own brand portfolio, and to ensure your trade marks are covered, it is advised that you conduct a review of your portfolio with a Trade Mark Attorney.
If you have questions or concerns relating to the Finland trade mark reforms, please contact Robert Ljungberg:
T: + 358 (0) 9 2516 6388