Paula Sailas April 12 2021 IP litigation and alternative dispute resolution options Berggren Oy | Intellectual Property - Finland Paula Sailas Intellectual Property IntroductionLitigation for IP disputesAlternative dispute resolution for IP disputesCommentIntroductionIn any IP dispute, the first issues to determine are the validity, strength and scope of protection of the IP right in question. In Finland, the validity of IP rights (except copyrights) is examined by the Finnish Patent and Trademark Office.The question of whether one party has infringed another party's valid IP rights may be addressed through litigation. A specialised IP court may be a good choice in certain circumstances. However, various alternative dispute resolution mechanisms are also available, depending on the IP right and the dispute in question.Litigation for IP disputesSince 2013 the Market Court has held national jurisdiction over IP matters, excluding criminal cases (eg, copyright infringement and counterfeiting matters), which are managed by the general district courts. Thus, the Market Court is also the IP court – the first instance for all civil IP matters. Further, it holds subject-matter jurisdiction over appeals concerning the Finnish Transport and Communications Agency's (Traficom's) domain name decisions.The processes for IP litigation and registration appeals start with the drafting and filing of an application for a summons or a complaint to the Market Court. The official filing fee is €2,050. If necessary, after receiving the other party's response, the judge may organise a process hearing in the form of a discussion between the parties at the Market Court to solve and clarify undisputed issues and review relevant procedural matters. The written procedure may also be supplemented by an oral hearing. Proceedings before the Market Court conclude with the delivery or announcement of a judgment or decision. The Market Court may return the case to the registration authority for reconsideration. Parties may appeal Market Court decisions directly to the Supreme Court or, for administrative registration matters, to the Supreme Administrative Court. However, parties must obtain leave to appeal for both case types.The Market Court aims to keep the average processing time in IP disputes reasonable. The specialised IP court appoints part-time expert members to support the judges on technical questions. Nonetheless, litigation is often the longest and the most expensive way to solve a dispute.While IP rights (eg, patents and trademarks) may be protected globally, IP litigation is usually tied to the territoriality of the IP right and national legal proceedings. In Finland, the proceedings are mainly open sessions and litigation ends with a professional judge's final, publicly available decision. Usually, the losing party must pay all litigation costs to the winning party, unless the decision is partial and some of the claims have been rejected. However, if the losing party has insufficient resources, another court case may be required to obtain compensation, if any.Therefore, parties are recommended to consider alternatives to traditional litigation in IP disputes.Alternative dispute resolution for IP disputesAlternative dispute resolution procedures in Finland include:procedures through the Arbitration Institute of the Finland Chamber of Commerce (FAI), which provides arbitration and mediation services in domestic and international disputes, including all IP disputes;specific alternative dispute resolution policies and processes for domain name dispute resolution; andassistance from the Copyright Council, which:assists the Ministry of Education and Culture in processing matters relating to copyright; andissues statements on how to interpret copyright law.IP arbitration and mediationArbitrationArbitration is provided by the FAI and is governed by the Arbitration Act 1992. The main benefits of arbitration are:confidentiality;cost and time efficiency;parties' autonomy; andthe use of special experts.Arbitral awards are also final, binding and immediately enforceable. However, the Arbitration Act includes no provisions on precautionary measures. Therefore, if a party must prevent another party from selling infringing goods urgently, it should make a separate application to a district court.MediationCourt mediation has been available in Finland since 2006 but is rarely used for IP disputes since the Law on Mediation and Enforcement of Disputes in General Courts does not apply to Market Court cases. Parties usually wish to find amicable settlements in IP disputes through negotiations as the financial stakes are often less than the potential litigation costs.Alternative dispute resolution policies for domain namesInternational UDRP and URS policiesThe Internet Corporation for Assigned Names and Numbers' Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension System (URS) are effective international domain dispute resolution procedures.The UDRP establishes a legal framework for the resolution of disputes over generic top-level domains (gTLDs) (eg, '.biz', '.com', '.info', '.mobi', '.name', '.net' and '.org' domain names) and country code top-level domains (ccTLDs) that have voluntarily adopted the policy.The URS procedure applies to new gTLDs and certain legacy top-level domains which have incorporated it (eg, '.org', '.info' and '.jobs' domain names and some ccTLDs such as '.pw'). The cases are judged by panellists who are experienced in trademark and domain matters.Although the available remedies are more limited than court proceedings, both the UDRP and the URS offer faster and more cost-effective alternatives for domain-related disputes.Claims to remove '.fi' domain namesOverall, '.fi' domain names are reliable and secure. They are acquired from Traficom. Domain name holders are responsible for ensuring that the domain names which they register are lawful. Domain names must not infringe any protected names or trademarks owned by another party.Traficom can remove '.fi' domain names from the register at the request of a protected name or trademark's owner if, at the time of registration, any of the following apply to the domain name:it is based on another party's protected name or trademark, unless the domain name holder can present an acceptable reason for registering it;it is similar to another party's protected name or trademark and the domain name holder's clear intent is to benefit from it or cause damage; orit is similar to another party's protected name or trademark because it is deliberately misspelled and the holder has registered multiple domain names.The removal claim may be based on an unregistered name or trademark only if the trademark is clearly established. Traficom cannot evaluate the status or strength of the trademark and parties should take any disputes relating to a right's validity to the Market Court first.Copyright Council statementsCopyright Council statements may relate to:copyrightability standards;economic and moral rights;communication to the public;limitations on copyright; andcopyright transfers.Such statements are recommendations and not legally binding.The Copyright Council provides no statements where this would involve the interpretation of other areas of law or is related to a contractual dispute. Therefore, parties should still take any disputes and copyright infringement cases to either the district courts or the Market Court.CommentLitigation for IP disputes in Finland is primarily exercised in the Market Court, where judges have expert members to support decision making from a technical perspective, which is particularly relevant in patent and utility model proceedings. Market Court proceedings are generally relatively quick compared with the district courts and are well suited for national IP disputes.However, parties which desire a quick and confidential solution, particularly for international issues, may wish to consider arbitration.The owner of a domain name is often protected by privacy rules, making them hard to reach. In such cases, instituting an alternative dispute resolution process is often the best first step in challenging an infringing domain registration.A private artist who believes that their copyright may have been infringed can easily and cost-effectively apply for a supportive statement from the Copyright Council and decide whether to proceed with a court case.In Finland, both litigation and alternative dispute resolution processes are generally relatively cost-effective and are reasonably fast and reliable methods for settling a variety of IP-related disputes.For further information on this topic please contact Paula Sailas at Berggren Oy by telephone (+358 10 227 2000) or email ([email protected]). The Berggren Oy website can be accessed at www.berggren.eu/en/.