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.
The Finnish Trademarks Act will be reformed
The Finnish Trademarks Act is being reformed. The proposal for the new Act is currently under consideration by Parliament, and the Act is expected to enter into force in early 2019. The purpose of the reform is to modernize Finnish regulations on trademark rights, and implement the EU Trademark Directive. Some of the key changes proposed in the new Act are highlighted below.
Amendments to the list of goods and services
With the reform, the practice of interpreting the lists of goods and services relating to trademarks filed before 1 January 2014 will change 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. With the new law, however, after a transitional period these registrations will no longer be considered to cover any other goods or services than those specifically mentioned in the 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 specifying 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
Another important change relates to the representation of registered trademarks. According to the new Act, a graphical representation of the mark will no longer be 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. Once the new Act enters into force, marks filed in black and white will be 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 will still be 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.
Term of registration
The term of registration of trade marks filed under the new legislation will be 10 years from the filing date, not from the registration date. This change will 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 legislation is also expected to introduce changes to the opposition procedure. Accordingly, the parties will be able to jointly request a cooling-off period for trying to reach a friendly settlement before the commencement of the adversarial part of the proceedings. The initial cooling-off period will be 2 months, and it is extendable to a maximum of 12 months in total.
Also non-use will 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
In accordance with the current practice, cancellation actions relating to registered trademarks have to be filed before the Market Court, a specialized court in IP matters. The cost of the process has been relatively high, as the official fees alone exceed 2000 euros. The losing party may also be required to compensate for the winning party’s reasonable costs in the matter.
The new legislation will introduce 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 expected to be significantly lower. The parties must also bear their own costs in the matter.
Should you have any questions about the reform, just contact our trademark attorneys!
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