Overview (December 2000)

As a member of the European Union, Finland is constantly updating its laws to bring them into line with EU legislation. Legislation on intellectual property corresponds largely to existing EU legislation. However, based on traditional cooperation between the Scandinavian countries, Finland's legislation in this area is also comparable to that of Sweden, Norway and Denmark. Cooperation in the preparation of the statutory provisions as well as a parallel approach in interpretation have led to extensive similarities between the Scandinavian IP laws. Protection of IP rights is usually provided by individual statutory laws.

Patents and Legislation

Finland joined the European Patent Convention (EPC) on March 1 1996. An applicant in Finland may now choose between filing an application for a European patent to the European Patent Office (EPO) with Finland as one of the designated countries, or an application to the national Patent Office (the National Board of Patents and Registration).

Finland is a party to the Paris Convention and ratified the Patent Cooperation Treaty in 1980. Finnish patent law legislation is also considered to conform with the requirements of the TRIPS agreement.

Eligible subject matter
The provisions of the Patent Act (550/1967, as amended) regarding the eligible subject matter for and exceptions to patenting, as well as provisions for the statutory bars, conform with the provisions of the EPC. However, the interpretation of certain provisions may vary between the EPO and Finnish courts.

According to the Patent Act a person who has made an invention fulfilling the criteria of novelty, invention and industrial applicability (or his successor in title) shall be entitled to obtain, on application, a patent for an invention and thus the exclusive right to exploit the invention commercially.

National patent applications filed with the Finnish National Board of Patents and Registration are subject to a thorough examination of invention and applications. The period for the examination of a patent application is over two years for domestic and approximately seven years for foreign applications.

Product patents for pharmaceutical and nutrititional products have been granted only since January 1 1995.

As regards the patenting of biotechnological inventions, the Finnish legislation was brought into line with the EU Biotechnology Directive on June 30 2000, when amendments to the Patent Act entered into force.

Duration of protection
A patent may be maintained for 20 years from the date of the filing of the patent application. If the invention is not exploited in Finland to a reasonable extent within three years of the granting of the patent and four years from the filing of the application, a party wishing to exploit the invention may be granted a compulsory licence, provided that there is no acceptable explanation for the failure to exploit the invention.

Patent term extensions
The EU supplementary protection certificate, which extends the patent protection for up to five years after the end of the 20-year patent term, has been available for pharmaceutical products since January 1 1994 (Regulation 1768/92/EEC), and for plant protection products since April 1 1997 (Regulation 1610/96/EC).

Employee inventions
According to the Act on Employee Inventions (656/1967), an employee has the same right to his or her inventions as other inventors. However, the act provides that an employer is entitled to acquire the right to the invention if it bears some relationship to an employee's employment contract and is within the sphere of operations of the employer. According to amendments to the act which entered into force on January 1 2001, the employer is equated with the employer's group of companies. The act also obliges the employee to notify the employer of any intention to apply for a patent before filing an application. The act contains a mandatory provision on the employee's right to fair remuneration with regard to employee inventions.

Trademarks

In Finland, trademarks are mainly regulated by statutory law. The legislation on trademarks is laid down in the Trademarks Act (7/1964, as amended) and the Trademarks Decree (256/1964, as amended). The act was reformed to take account of Finland's signing of the European Economic Area Agreement as well as its joining the European Union on January 1 1995.

The Trademark Act has also been amended to reflect Finland's adherence to the Madrid Protocol on the International Registration of Trademarks and EU legislation related to the Community trademark. The most recent amendment brought Finnish legislation into line with the Trademark Treaty and came into force on March 1 2000.

The relevant registration authority in Finland for matters falling under the Madrid Protocol is the National Board of Patents and Registration. Finland has reserved the right to raise an objection under national law to an international registration within 18 months.

An exclusive right to a trademark as a special symbol to distinguish the goods of one's business from the goods of others can be obtained through establishment as well as through registration. A trademark is deemed established if it has become generally known to the relevant business community or consumer circles in Finland as a special symbol of its proprietor's goods or services.

Subject matter of trademark protection
According to the Trademarks Act, a trademark may consist of any symbol that can be represented graphically and that serves to distinguish its proprietor's goods or services. A trademark may consist particularly of:

• one or more words (including personal names)
  
  
• a design;
  
  
• a letter;
  
  
• a numeral;
  
  
• the shape of goods; or
  
  
• the packaging of the goods.

Through establishment, an exclusive right may be obtained for other kinds of symbols used to distinguish goods. The definition of a 'trademark' alows for the protection of certain colour schemes, slogans, decorations or musical jingles, provided that they fulfil the requirements of distinctiveness.

Registration
A trademark applicant may choose between three separate procedures in order to obtain trademark protection in Finland. Firstly, an applicant can file a national application to the Trademark Office of the Finnish National Board of Patents and Registration. Secondly, trademark protection can be obtained by filing an international application in accordance with the provisions of the Madrid Protocol. Thirdly, an applicant can apply for a European trademark granted by the Community Trademark Office.

The national registration of a trademark requires filing with the Finnish Trademark Office. Applications are subject to a pre-registration examination by the registration authority. Firstly, the registration authority examines absolute grounds of refusal, such as lack of distinctiveness, deceptiveness in matters such as nature, quality or geographic origin, and the mark's conformity with law, public order and morality. In Finland, the registration authority also examines relative grounds of refusal, such as a confusing similarity to an earlier trademark (or to a pending registration application) or to the name or protected trade name of another trader, or infringement of another's copyright. A prior international or European trademark registration constitutes a relative ground of refusal for national filings. Further, a trademark may not be registered if it is likely to cause confusion with a trade symbol being used by a third party at the time of the registration application, if the applicant is aware of such use and did not use his or her own mark before use of the other trade symbol began. However, by consent it is possible to overcome the obstacles to registration caused by prior rights, unless the registration would clearly mislead the public.

Use of the trademark does not constitute a condition for registration. However, geographical names for example, cannot be registered until they have attained a so-called secondary meaning on the basis of becoming established.

If the registration application is correctly made and no obstacles for registration are found, the registration authority must register the trademark and publicly announce the registration. Within two months from the date of public announcement, third parties may give notice of opposition to the registration, whether on absolute or on relative grounds. Thus, for instance, the owner of an older trademark may claim that the opposed trademark is identical or similar to his trademark used for similar goods. Common interests can also be referred to. Upon objection, the registration authority must cancel the registration if an obstacle to registration is deemed to exist.

In 2002 the average period for processing of national applications was 10 months and international applications 10.5 months.

Maintenance
The registration of a trademark takes effect from the date of filing of the application and remains in force for 10 years from the date of registration. Registrations can be renewed indefinitely for consecutive 10-year periods. A written application for renewal to the registration authority is needed only if the holder wishes to amend the registration entry. If no changes are requested, the registration is deemed renewed automatically on payment of a renewal fee.

Foreign applicants
The Trademarks Act contains specific provisions on the registration of foreign trademarks in Finland and on foreign trademark holders. It stipulates that a non-resident applicant for, and a holder of, a registered trademark, as well as a party opposing a registration, must be represented by a local agent, who may be a natural person or a Finnish corporate body. A holder of an international registration under the Madrid Protocol who is not domiciled in Finland and who wishes to give a statement regarding a provisional refusal of the National Board of Patents and Registration must also use a local agent. The act also provides for a six-month 'convention priority' based on applications filed in signatory states of the agreement establishing the World Trade Organization (WTO).

Infringement actions
Infringement of a trademark is not specifically defined in the Trademarks Act, but the act defines an 'exclusive right' and sets out the penalty for any violation of this. An exclusive right to a trademark, whether acquired by registration or through establishment, means that no one other than the holder of the trademark may, without proper consent, use in trade a symbol that is likely to be confused with the said trademark. This is the case whether the symbol is placed on the goods or on their packaging, in advertising or business documents, or otherwise, including oral use. The provisions of the exclusive right are applicable irrespective of whether the goods are marketed or intended to be marketed in Finland or abroad, or imported for business purposes.

Therefore, if a symbol is likely to be confused with a trademark which is already protected under the Trademarks Act, the provisions of the act concerning infringement apply. In general, the protection against unauthorized use is provided only with regard to goods of the same or similar kind to those to which the trademark refers. Irrespective of this, the likelihood of confusion of trademarks may be invoked if a mark is widely known in Finland and the use of another similar symbol would result in an unjustified exploitation of the distinctive power or goodwill of the mark or would be likely to diminish it. Thus, a mark with a high reputation can enjoy protection even beyond the similarity of goods.

Copyright

The Finnish Copyright Act (404/1961, as amended) provides protection for literary or artistic works of authorship, such as:

• fictional or descriptive representations in writing or speech;
  
  
• musical, dramatic or cinematographic works;
  
  
• photographic works or other works of fine art;
  
  
• products of architecture;
  
  
• artistic handicraft; or
  
  
• industrial art.

Maps and other descriptive drawings or graphically or three-dimensionally executed works, computer programs and even qualifying data compilations, are also considered to be literary works.

Legal protection of so-called 'neighbouring rights' is provided under the Copyright Act to artists' performances of literary and artistic works and to recordings of these performances, producers' recordings of audio works, producers' first recordings of motion pictures, radio and television broadcasts, non-copyrightable factual compilations and photographs, and qualifying foreign press reports.

On the basis of reciprocity, copyright and neighbouring rights protected in countries which are party to the relevant international conventions are also protected in Finland. Finland is bound by the following international conventions and treaties:

• the Berne Convention, as amended in Paris 1971;
  
  
• the Universal Copyright Convention, as amended in Paris 1971;
  
  
• the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations;
  
  
• the 1971 International Convention for the Protection of Recording Producers against Piracy; and
  
  
• the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement.

The World Intellectual Property Organization (WIPO) Copyright Treaty and the Performances and Phonograms Treaty were adopted in December 1996. Finland has signed the treaties but ratification has not yet taken place.

Further, Finland's copyright legislation has been harmonized with, among others:

• the Software Protection Directive (91/250/EEC);
  
  
• the Satellite Broadcasting and Cable Retransmission Directive (93/83/EEC);
  
  
• the Rental and Lending Directive (92/100/EEC);
  
  
• the Term of Protection Directive (93/98/EEC); and
  
  
• the Directive on Legal Protection of Databases (96/9/EC).

Subject matter of copyright protection
Copyright in a work of authorship and so-called neighbouring rights arise when the work has been created. In Finland, in accordance with the provisions of the Berne Convention, no registration is needed, or even possible.

In order to obtain protection, a work must meet certain criteria - that is, it must be independent and original in comparison to other works.

The rights protected under the Copyright Act can be divided into economic and moral rights. Various economic rights protected by the provisions of the Copyright Act, such as exclusive distribution and reproduction rights, can be seen as different forms of authors' exclusive right to dispose of their works by reproducing copies and making them available to the public in an unaltered or altered form. The Finnish copyright legislation does not differentiate between the distribution right and the right of communication to the public. Such difference has, however, been made in the WIPO Copyright Treaty and the proposal for a European Parliament and Council Directive on the harmonization of certain aspects of copyright and related rights in the information society. It is expected that the international developments will bring some amendments to the Finnish Copyright Act in this respect. With regard to making temporary copies for technical purposes in relation to the publication of works on the Internet, the same rules regarding the exclusive rights of the author might not apply.

Moral rights include the rights of authors, performing artists and photographers to have their name "announced in an appropriate manner", as restricted by the statute, in connection with the protected work during performances, reproductions, broadcasts, shows, or displays either to the public or in private circles. Further, moral rights include the right to prevent any showing or distribution of a protected work or performance when that showing or distribution could injure the literary or artistic respect enjoyed by the author or performing artist.

The moral rights protected under the Copyright Act may be transferred only if the transfer concerns the limited use of the work, performance or photograph.

The economic rights of authors include exclusive distribution, rental and lending rights with respect to their works and copies thereof. The author's distribution and lending rights with respect to a legitimate individual copy of the work are exhausted once the distribution right is exercised anywhere in the world. However, lending rights with respect to computer programs and motion pictures are not. Authors of works other than computer programs and motion pictures retain the right to claim compensation for the lending of their work despite exhaustion, provided the lending was not conducted by a public institution such as a public library or museum and the compensation is claimed within three years of the lending occurrence. Authors retain their exclusive rental rights regardless of the exhaustion of their distribution and lending rights.

Under the Copyright Act, authors of qualifying works of fine art are entitled to compensation amounting to 5% of the purchase price (VAT exclusive) of their works if the works are publicly resold by professionals. The right to compensation subsists as long as the copyright to the work exists. This right, however, is personal to the author and his or her beneficiaries or inheritors, and may not be transferred or assigned.

As a general principle, copyright in qualifying works is owned by the natural person who created the work. It is not possible in Finland for legal persons to own the copyright to a work except through derivative ownership. Copyright in works created in the course of employment are usually the property of the employer if the work forms part of the employer's business. Often, employees waive copyright by virtue of their employment contract or the nature of their work. Copyright in computer programs and directly related works, as well as in factual compilations and databases created by employees, automatically transfers to the employer.

Duration
On January 1 1996 the Copyright Act was harmonized with the Terms of Protection Directive. As a general rule, copyright subsists for 70 years after the death of the author. The Copyright Act also provides extended protection regarding the moral rights contained in literary works that the Finnish Ministry of Education defines as classics.

Photographs and neighbouring rights under the Copyright Act enjoy a 50-year protection term calculated from various occurrences (eg, the first performance, release or broadcast).

Database protection
Even before the implementation of the EU Directive on the Legal Protection of Databases, a catalogue, table, program, or any other production in which a significant amount of information is compiled was protected under the so-called 'catalogue protection'. Catalogues may not be reproduced without the consent of the producer of the compilation.

The Copyright Act extends protection to compilations of data or other material that fulfil the requirement of originality. The term of protection for databases is 15 years, as required under the Database Directive.

A new specialized form of protection will affect databases that result from remarkable intellectual or economic input. These databases will be subject to protection if they are produced in the European Economic Area.

The Copyright Act contains provisional terms for works created before January 1 1996.

Future changes
Finnish copyright legislation is in the process of being reformed. The purpose of the reformations is to implement the Copyright Directive (2001/29/EC). The preparatory work for reform began in September 2001 and the deadline for implementing the Copyright Directive was December 21 2002. The government proposal for the amendments was received by Parliament in October 2002. However, the new law was not passed in time and the government bill lapsed in consequence of the end of the term of the Parliament. Therefore the implementation of the Copyright Directive is delayed.

According to Minister of Culture Tanja Karpela, the reforms will be effected in two phases. The first phase will be completed as soon as possible, after which the preparatory work for the second phase will be commenced without delay. A new bill is now being prepared on the basis of the lapsed one.

According to Karpela, one of the most important issues is the choice of law regarding trans-border exploitation of copyright. Other important questions relate to effective investigations, penalties and remedies concerning international copyright infringements, as well as to the adoption of technical measures restricting unauthorized exploitation.

Design Rights

The Finnish Design Protection Act (221/1971) was originally prepared in close cooperation with other Scandinavian countries. The Design Protection Act has been revised to meet requirements of the Design Protection Directive (98/71/EC). The amendments entered into force on August 1 2002. The Design Protection Act provides protection for industrial designs involving functional elements, aesthetic designs and ornaments that qualify as creative, novel and which possess individual character at the date of application.

The Council Regulation on Community Designs (EC 6/2002) entered into force on March 6 2002. A new chapter regarding Community designs was added to the Design Protection Act, and the provisions entered into force on January 1 2003.

The Community design has a broader geographical scope of protection than national designs, as it covers the whole of the European Union. Since January 1 2003 it has been possible to file applications for registration of Community designs to the Office of Harmonization in the Internal Markets. These applications have been processed by the Office of Harmonization in the Internal Markets since April 1 2003. The Regulation on Community Designs introduced a novelty in the legal protection of designs: namely, the protection of unregistered designs.

The subject of protection of the Design Protection Act is merely the outer appearance and not the possible technical function of the design. Protection is granted for the design, pattern or ornament of an actual product. Both two and three-dimensional designs may qualify for protection. The design must, as a rule, present the whole appearance of the relevant product. However, it is possible to obtain design protection for part of a product which remains in sight during the normal use of the product and the visible features of which fulfil the requirements of novelty and individual character.

Creation of rights
The design's registration with the National Board of Patents and Registration or the Office for Harmonization in the Internal Market is a precondition for design protection. A design may be registered where it is the result of independent creative work, is new and possesses individual character at the date of application.

The requirement of an independent creative element has in practice resulted in the disqualification of banal designs, such as those consisting of commonly used patterns or simple geometrical forms. Likewise, lack of creativity often prevents design protection of functional designs, typically spare parts.

Novelty is required of a design to qualify for registration. A design shall be considered new if no similar design has been available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs will be considered to be similar if their features differ only in irrelevant details. Prior to implementing the Design Protection Directive the requirement of novelty corresponded to that of the Patent Act - that is, absolute novelty was required. The disclosure provisions of the Design Protection Act were amended in connection with the implementation of the Design Protection Directive. A design is considered to be made available to the public if it has been published following registration or otherwise disclosed. This provision provides for relative novelty in accordance with the Design Protection Directive. Further, a design is not be deemed to made available to the public for the sole reason that it has been disclosed to a third person under the explicit or implicit condition of confidentiality. The Design Office with the National Board of Patents and Registrations performs a pre-examination as to the novelty of national design registration applications.

A significant change in the Design Protection Act was the introduction of an extensive grace period. Disclosure of a design that takes place less than 12 months before the date of application for registration does not imply loss of novelty. Prior to these amendments the Design Protection Act contained a grace period of six months concerning disclosure that occurs as a result of abuse or display at exhibitions. The new grace period of 12 months only concerns applications filed after the amended Design Protection Act has entered into force - that is, after August 1 2002.

Finally, to qualify for registration a design must possess individual character. The requirement of individual character is relevant both in connection with registrability and with regard to defining the scope of protection of a registered design, for example, in an infringement suit.

If it meets these criteria, the design will be entered into the design register and published. The average processing time of design applications was 9.5 months in 2002.

Beneficiaries of rights
The exclusive right to commercially exploit a design vests with its creator. The concept of an independent creative element as a precondition for registration clearly defines the creator as a physical person. Design rights are freely transferable to legal persons. However, the creator must always be named in the application for registration. Unlike the law with regard to patentable inventions, there are no particular provisions regarding the employer's right to a design created by an employee. Consequently, where a professional designer is employed, it is advisable to provide for the employer's right of commercial exploitation of designs, as well as possible additional remuneration, if any, in the employment agreement.

Maintenance and extension
A design registration obtains priority from the date of application and remains in force for five years from that date. Prior to the implementation of the Design Protection Directive, the registration of a design could be renewed twice for consecutive five-year periods. The present provisions of the Design Protection Act enable a design to be renewed four times for consecutive five-year periods. In other words, the maximum term of design protection was extended from 15 years to 25 years as a result of the implementation of the Design Protection Directive. The extended period concerns both new and existing design registrations. Exploitation of the design is not a precondition for renewal. The applicant is required to file an application for renewal only if he wants the registration entries to be amended in connection with the renewal. Otherwise the design is considered to be renewed on due payment of the renewal fees.

Transfer
Design rights are freely transferable and licences may be granted. The design right also may be pledged. There is no obligation to register assignments and licences with the design register, and such entries are mainly of procedural interest.

However, where an assignment, licence or pledge is entered into the design register, any prior assignment, licence or pledge is not enforceable against the registered holder of the right in good faith, unless a prior request for register entry had been made. Unless otherwise agreed, a licence may not further assign his right or grant sub-licences. However, as a rule, the licence will be conveyed along with a transfer of business. These principles also apply to a compulsory licence.

International aspects
Finland is a party to the Paris Convention for the Protection of Industrial Property and a member of the European Union. Finland has also ratified the agreement establishing the WTO, and the TRIPS Agreement has applied since January 1996. A foreign applicant must appoint a local agent for the application and registration of a design. The Design Act also provides for a six-month convention priority based on applications filed in states that are party to the Paris Convention or, as of January 1 1996, the WTO.

Since January 1 1994 (when Finland ratified the European Economic Area Agreement (EEA)), the previously adopted principle of national exhaustion of the design right was lifted and replaced with the principle of regional exhaustion within the EEA. Consequently, the holder of a design right cannot prohibit parallel imports of design-protected products into Finland or the use and sale of them in Finland, when the products have been placed on the market in the EEA for the first time by or with the consent of the holder of the design right. As indicated above, Finland has implemented the Design Protection Directive and the Council Regulation on Community Designs is applicable in Finland.

Utility Models

Utility models are protected under the Finnish Utility Model Act (800/1991, as amended), which took effect on January 1 1992. Utility models are intended to serve as an appropriate form of protection (i) in situations where the criterion of invention required for patentability is not fulfilled by technical ideas and solutions, although this is not obvious to a professional in the relevant field, and (ii) for small inventions and improvements that fulfil the criteria of patentability but due to the type of invention or the shortness of the commercial utilization period of the product, will not benefit from the relatively slow and expensive patent protection. The idea behind the introduction of utility model protection was to achieve a rapid and effective form of protection for industrial designs qualifying as inventions. This target has been reached, as the average period for the processing of a utility model application is approximately four months.

Nature of the right
Subsequent to amendments to the Finnish utility model legislation, effective as from January 1 1996, protection under the Utility Model Act is granted to an invention comprising a technical solution that can be industrially utilized. Inventions in the field of chemical industry, such as chemical solutions, can now also be protected by utility model rights. As opposed to patent legislation, production processes cannot be protected by utility model rights.

The preconditions for the granting of utility model protection are that (i) the criteria of novelty and invention are fulfilled and (ii) the invention differs from the state of the art by the date of application. The requirement of invention is assessed more leniently than during the patenting process.

Creation of rights
Registration forms a precondition for obtaining a utility model right. The registration procedure is similar to that of a patent application. The National Board of Patents and Registration serves as the registration authority

Non-resident applicants seeking registration must appoint an agent resident in Finland to represent them in all matters concerning the application and registration.

It is also possible to file an application for utility model protection by transformation of a patent application into a utility model application. The date of priority will in this case commence as from filing of the patent application. Subsequent to the amendments of the act, it is even possible to transform a patent application into a utility model application. This possibility is a significant improvement for the applicant, as through rapid processing of a utility model application the applicant can quickly obtain an enforceable industrial property right in relation to third parties while maintaining the possibility of obtaining long-term patent protection.

Utility model applications are subject to examination of the invention. The examination is, however, mainly limited to fulfilment of the formal requirements, and does not cover the criteria of novelty and invention.

Maintenance and extension
A utility model registration obtains priority from the date of application and remains in force for four years. The registration may be renewed twice for consecutive four and two-year periods; respectively. The total term of protection is therefore 10 years.

The Utility Model Act provides for a 12-months 'convention priority'. Since the amendment of January 1 1996, this can also be granted for applications filed in states not party to the relevant conventions. Future developments in Finnish utility model legislation are expected to follow the harmonization within the European Union.

Transferability of Rights

In Finland all IP rights are freely transferable. There is no obligation to register assignments and licences regarding patent, design and utility model rights and trademarks. However, in order to protect the related rights against third parties, the registration of transfers of rights and licences with the register of patents is both possible and recommended. A patent may also be registered as security. Registration is recommended since non-registered assignments and licences are not enforceable against a third party who has acquired the rights in good faith. Unless otherwise agreed, a licensee may not further assign his or her rights, or grant sub-licences.

In transferring copyright and neighbouring rights the restrictions on moral rights described above must be remembered.

Disputes

The sole competent court regarding disoutes involving patents (including employee inventions), trademarks, design rights, utility models, plant breeders' rights and protection of the layout designs of integrated circuits is the District Court of Helsinki, as the court of first instance. This is also the designated national court of first instance for European trademark infringement cases. Any appeal from the District Court of Helsinki is to the Helsinki Court of Appeal and, if granted leave to appeal, to the Finnish Supreme Court. A claim for copyright infringement can be brought in any of Finland's district courts that have jurisdiction over the controversy and the parties under the general rules of procedural law (ie, in most cases the domicile of the defendant).

The court may, at the request of the plaintiff, grant interlocutory injunctions and seizures. Similarly, it may order the confiscation of the infringing product. Infringing property can be seized on the decision of the public prosecutor or the court, if the injured party so demands, irrespective of whether the infringement was deliberate. Where necessary, sufficient security for possible damage and for the costs of the confiscation must be placed. In such a case the general provisions on confiscation in criminal matters must also be applied. In a trademark infringement case the court may order that the trademark which has been illegally affixed onto goods, packaging, brochures, business documents or the like must be removed or altered so that it no longer can be misused. If such a measure cannot otherwise be undertaken, the court may even order the destruction of the infringing property.

The public prosecutor may bring criminal charges only if the injured party has reported the offence for prosecution. The infringing products may be seized if it is certain that a crime has taken place.

When the relevant statute does not contain specific provisions regarding temporary remedies, such as interlocutory injunctions, these precautionary measures may nevertheless be requested on the basis of Chapter 7 of the Code of Procedure, which includes general provisions regarding measures such as seizure and interlocutory injunctions.

Customs Actions

Council Regulation 3295/94 of December 22 1994 (as amended by Council Regulation 241/1999 of January 25 1999) lays down measures to prohibit the release of counterfeit and pirated goods for free circulation, export, re-export or entry for a suspensive procedure. It has been in force since July 1 1995 and applies to all EU member states, including Finland. The regulation allows trademark, copyright, patent and design right holders to receive assistance from the customs authorities to stop distribution of counterfeit products prior to their introduction into the Finnish market. The Finnish Customs Act (1466/1994, as amended) was updated to permit customs authorities to inform the relevant right-holders of a potential delivery of counterfeit goods.

In case KKO 1997:72 the Finnish Supreme Court held that Articles 6 and 7 of the European Union Counterfeit Regulation are applicable to, and the Finnish courts have jurisdiction over, products in transit destined for Russia. The case shows that in Finland the Counterfeit Regulation has improved the chances of trademark and copyright owners of stopping and seizing counterfeit products at the border.

Other Statutes and Forms of Protection

The protection of company names is based on the Finnish Trade Names Act. Particular laws have been enacted on the protection of the layout design of integrated circuits as well as the rights of plant breeders. The Act on Unfair Business Practices (1061/1978, as amended) also contains provisions for protection against unfair utilization of goodwill, copying and abuse of trade secrets and know-how.

Under the existing law, Finnish top-level domain names can only be granted to:

• Finnish companies;
  
  
• Finnish branch offices of foreign companies;
  
  
• Finnish associations and foundations; and
  
  
• individual entrepreneurs registered with the Finnish Trade Register.

A Finnish top-level domain name must, as a general rule, correspond to one of the following:

• registered trade name of the applying entity;
  
  
• its auxiliary or parallel trade name;
  
  
• a Finnish registered trademark; or
  
  
• a registered EU trademark.

As of September 1 2003 the law will be changed by the new Act on Domain Names (228/2003). The new act will replace the administrative regulations of the Finnish Communications Regulatory Authority. The most significant change to the current situation is that there will no longer be a pre-examination of the applicant's right to the name. Under the new act, Finnish top-level domains will be granted on a first come, first served basis, in the same way as international top-level domains (eg, '.com' and '.net'). In contrast to the current requirements, the applicant does not need to have a registered right (eg, trademark or trade name) in the requested domain name. However, the applicant must ensure that the requested domain name does not infringe any existing IP rights, such as registered trade names or trademarks of another.

For further information on this topic please contact Rainer Hilli or Eeva Hakoranta at Roschier Holmberg, Attorneys Ltd by telephone (+358 9 228 551) or by fax (+358 9 664 303) or by e-mail ([email protected] or [email protected]).

The materials contained on this web site are for general information purposes only and are subject to the disclaimer.