It is surprisingly common with startups to not know how to incorporate patenting in their company’s business strategy. Our patent specialist Jorma Selin blogs about important aspects for you to consider.
Key changes of the new Finnish Trademarks Act
The Finnish Trademarks Act came into force on 1 May 2019. The purpose of the new law is to modernize Finnish regulations on trademark rights, and implement the EU Trademark Directive. Some of the key changes introduced in the new Act are highlighted below.
Amendments to the list of goods and services
The practice of interpreting the lists of goods and services relating to trademarks filed before 1 January 2014 has changed significantly. It may become necessary to specify the list of goods of such trademarks, for instance in cases where the application only contains class headings of the Nice Classification.
With marks filed before 1 October 2012, it was considered sufficient to include the class heading or identify the number of the class in the application in order for the trademark to cover all goods or services in that class. For marks filed between 1 October 2012 and 31 December 2013, the list could be supplemented with a statement that the mark covers all other goods/services included in the class in the Nice alphabetical list.
We therefore recommend updating the list of goods and services of these marks for instance in case other goods or services besides the class headings should also be covered. A request for spcifying the list of goods should be filed with the Finnish Patent and Registration Office at the latest in connection with the next renewal of the mark.
Representation of the mark
According to the new Act, a graphical representation of the mark is no longer necessary, as long as the form of representation of the mark is otherwise sufficiently clear, precise and intelligible. The change will facilitate the filing of trademarks involving, for instance, motion or sounds.
In the previous practice, marks registered in black and white have been considered to cover all colours. In accordance with the new Act, marks filed in black and white are considered to only cover the black and white form of the mark. However, the new interpretation does not apply to black and white marks filed before the entry into force of the new Act, and they are still considered to cover all colours.
We advise our clients to protect their trademark in the form in which it will be used. This is important because you may later have to prove that you are actually using the mark, for instance in case an opposition or a cancellation action based on non-use is filed against your mark. If you make changes to your trademark, you may want to protect the new version separately to secure your exclusive right to the mark.
No need to submit a power of attorney
As a rule a power of attorney is no longer needed in any proceedings.
Restoration of a missed term
Dismissed applications can be reinstated by paying a reinstatement fee and by correcting the deficiencies in the application.
Term of registration
The term of registration of trademarks filed under the new legislation is 10 years from the filing date, not from the registration date. This change does not affect the term of registration of marks filed prior to the entry into force of the new legislation.
Changes to the opposition procedure
The new Act makes changes to the opposition procedure. The opposition parties are now able to jointly request a cooling-off period for trying to reach a friendly settlement before commencement of the adversarial part of the proceedings. The initial cooling-off period is 2 months, and it is extendable to a maximum of 12 months in total.
Also non-use has become possible as a defence in opposition proceedings. At the request of the applicant, the proprietor of an earlier trademark with regard to which the registration procedure was concluded over five years ago must furnish proof that the earlier trademark has been put to genuine use during the five-year period preceding the filing date or date of priority of the later trademark, or that proper reasons for non-use existed. If proof of use is not submitted, the opposition will be rejected.
New administrative cancellation procedure
The new legislation introduces an alternative to the Court process in the form of an administrative cancellation procedure (revocation or declaration of invalidity) before the Patent Office. In comparison with the Court process, the official fees payable in connection with the administrative procedure are significantly lower. The parties must also bear their own costs in the matter.
Should you have any questions, just contact our trademark attorneys!
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