Revocation in Administrative Proceedings
Unauthorized Use of Trademarks
In 1998 the Ministry of Trade and Industry commissioned a working group to consider reforms to the Trademarks Act (7/1964, as amended). The working group has prepared these reforms in cooperation with the corresponding Swedish and Norwegian groups in order to maintain consistency in trademark legislation within the Scandinavian countries. In February 2001 the Finnish working group published a report proposing several amendments to the Trademark Act. The report was made available later in 2001 and was subsequently circulated for comments to be submitted by September 7. It seems that in many respects all three Scandinavian working groups have chosen a similar approach. However, in relation to the legislation currently in force in Finland, Sweden and Norway, it is expected that there will be more divergence between national trademark laws in the future.
The report introduces several major reforms to Finnish trademark legislation. According to the report the trademark legislation will be revised by incorporating the current Collective Mark Act into the new Trademark Act. The working group also proposes clarifying the wording of trademark legislation and bringing it into line with the international terminology, especially with the First Council directive to approximate the laws of the member states relating to trademarks (89/104/EEC). In addition, the working group aims to ensure the applicability of the new provisions regardless of technical developments, and enable electronic communication between the registration office and applicants.
The most important question from the point of view of trademark applicants and holders is whether Finland would move from the current ex officio examination of relative grounds for refusal of the registration to a system where trademark holders would need to attend to their interests by themselves. Under the current legislation all trademark applications are formally examined and rejected by the authorities in case of a relative ground for refusal. Such a ground exists, for example, when there is a confusing similarity between the applied trademark and a registered community trademark, unless the holder of the prior right has given his or her consent to the registration.
The working group seriously considered the abolition of the formal examination by the authorities but ended up proposing that these provisions be maintained unchanged. The working group based its reasoning on the argument that the current system guarantees legal certainty and that it does not undermine the rights of small and medium-sized companies that lack the necessary resources to look after their interests. However, since Finland joined the community trademark system the number of trademark applications affecting Finland has increased dramatically. Therefore, and since the registration procedure with the Office of Harmonization of Internal Market differs from the local approach, companies often need to arrange for appropriate trademark protection control under the existing legislation. Should Finland adopt the 'self-protection' system it would not significantly change the position of such companies.
Revocation in Administrative Proceedings
The working group further proposed that a trademark registration could be revoked in full or in part upon application in administrative proceedings. At present, revocation of a trademark registration once the period for filing an opposition against the registration has expired is possible only if the trademark holder initiates court proceedings. The aim of adopting provisions regarding revocation in administrative proceedings is to facilitate revocation in clear and undisputed matters. The revocation of a registration may be claimed after the opposition period has expired on the grounds that the holder of the registration in question cannot exploit it (eg, is dissolved). A trademark registration may also be revoked in administrative proceedings if there had been an unnoticed or ignored impediment to registration, or if the trademark had not been used as a symbol for the goods or services of its proprietor.
The decision to revoke a registration may be made in administrative proceedings if the registration holder fulfils any of the following conditions:
- consents to the revocation;
- does not respond to the claim; or
- is no longer in existence.
If the trademark holder objects to the claim the registration authority is obliged to reject the claim for revocation and call off the administrative proceedings. According to the working group's proposal the administrative revocation would be secondary to court proceedings and should be discontinued if a claim for cancellation of a trademark registration is or becomes pending in a court of law.
Unauthorized Use of Trademarks
The new provisions will provide a right to claim compensation for the unauthorized use of a trademark irrespective of whether damage has actually occurred. Under the current provisions a trademark holder bears the burden of proof as to the amount of damage suffered, which may often prove difficult to establish. Under the proposed rules trademark holders would be entitled to compensation for any unauthorized use of the trademark, and such right would not depend on negligence on the part of the infringing party or the amount of economic losses suffered by the proprietor. The compensation would be based on a normal licence fee. In case of unauthorized use that was negligent or intentional, the trademark holder would be entitled to compensation for all losses or damage suffered.
The working group also suggested that a geographical indication used in business could be registered as a collective mark and also as a trademark.
Geographical indications are currently protected only indirectly through provisions not included in trademark law concerning, for example, the prohibition from using untrue or misleading expressions regarding the geographical origin of a product in connection with marketing. According to the proposal, registration of a geographical indication as a trademark would be possible if the mark distinguishes a particular product from the products of another manufacturer and is not misleading.
Another novelty in the working group's report is the proposal that trademarks could be established regionally in certain parts of a country. Under existing legislation a trademark may only be considered to be established if it is known throughout Finland. Establishing a trademark regionally would require the mark to be known within that area and the exclusive right for the mark would be in force only within the particular region. According to the report, registration of a trademark that is identical or similar to a prior regionally established trademark would require the consent of the holder of the regionally established mark, but cancellation of a registered trademark would not be possible by invoking the right for a regionally established mark.
The report has been submitted to the Ministry of Trade and Industry and further preparation of the legislation is expected to follow. According to unofficial information received from the ministry, the authorities intend to submit a government bill to Parliament during 2002. However, it is not yet known when the legislation would come into force.
For further information on this topic please contact Eeva Hakoranta or Kati Määttä at Roschier Holmberg, Attorneys Ltd by telephone (+358 20 506 6000) or by fax (+358 20 506 6100) or by email ([email protected] or [email protected]).