The key national laws governing trademarks in Finland are:
- the Trademarks Act (7/1964, as amended by Law 107/2013);
- the Trademarks Decree (296/1964, as amended by Decree 579/2013);
- the Act on Collective Marks (795/1980, as amended by Law 108/2013);
- the Domain Name Act (228/2003, as amended by Law 116/2013); and
- the Information Society Code (917/2014, as amended by Law 1217/2014).
The above-listed national statutes also implement the relevant EU directives. EU regulations apply directly.
Finland has signed the following treaties and conventions relating to trademarks:
- the Madrid Protocol relating to the Madrid Agreement on the International Registration of Marks (1989);
- the Nice Agreement on the International Classification of Goods and Services;
- the Paris Convention for the Protection of Industrial Property (1883); and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights, attached to the Agreement Establishing the World Trade Organisation (1995).
Trademark protection is granted, irrespective of registration, to a sign that has been established in Finland. Thus, unregistered marks may come to enjoy the same protection as registered marks if they have been established through use. Protection for marks that lack inherent distinctiveness or that cannot be illustrated graphically can also be obtained through establishment (see definition below).
Criteria for protection
A mark is considered ‘established’ if it has become generally known in the relevant commercial or consumer sectors in Finland as a specific symbol of the proprietor’s goods. The criteria for protection vary depending on:
- the nature of the goods;
- the length and scale of use;
- the target group; and
- the scale of the marketing investments.
The relevant target group can consist of a very large group or a certain small group, depending on the nature of the goods. For example, trademark rights might arise rapidly and with minimal marketing expenditure if the mark is used in connection with highly specialised tools used only by a small number of professionals. At the other end of the scale are goods or services that can be obtained by everyone, businesses and consumers alike.
Further, the relevant group is required to associate the unregistered mark with the entity from which the goods or services originate. The target group needs to have a sufficient degree of awareness of the mark. This is assessed individually for each case and the required level of use depends heavily on the target group for the relevant goods or services. However, as a general principle the use must be nationwide and extensive.
Only in rare circumstances may extensive foreign marketing lead to a mark being considered established in Finland.
No establishment can occur prima facie where the mark lacks inherent distinctiveness. Conversely, establishing an unregistered mark through use may have practical value, since it will then also have achieved sufficient distinctiveness and thus be registrable at the Finnish Patent and Registration Office (PRH). Due to the obvious disadvantages inherent to unregistered trademark rights, it is generally advisable to seek registration of a mark, rather than to rely on establishment.
Formal requirements for registration
Under Finnish legislation any private person, company, association or public organisation may apply for, and hold, a trademark registration. However, foreign applicants must use a representative if they have neither a domicile nor a registered office in Finland. If a representative is used for filing a trademark application, a duly signed power of attorney is required.
Under Section 1 of the Trademarks Act, any sign that can be represented graphically and by means of which goods marketed in trade can be distinguished from those of others may be registered as a mark. A mark may thus consist of words, figures, letters, numerals or the shape of goods or their packaging. Unconventional marks, such as sound or colour marks, are also registrable, provided that they are distinctive and can be represented graphically.
Under Section 13 of the Trademarks Act, a mark must be capable of distinguishing the owner’s goods from those of others. A mark that denotes, either alone or with few alterations or additions, the kind, quality, quantity, use, price or place or time of manufacture of the goods will not be regarded as distinctive as such. Nor will a mark be regarded as distinctive if it consists solely of a form that is characteristic of the goods or necessary to achieve a technical result, or which substantially increases the value of the goods.
Marks with a reputation
Under the Trademarks Act, marks with a reputation enjoy a broader scope of protection than ordinary marks. The use, in the course of trade and without due cause, of a sign that is confusingly similar to a sign that has a reputation in Finland would be considered an unfair exploitation of, or an action detrimental to, the distinctive character or fame of the earlier trade symbol.
Marks with a reputation can be entered into a separate list at the PRH. The entry requires extensive evidence of the mark’s reputation, which must be resubmitted whenever the entry is renewed.
Grounds for refusal
If the PRH considers a mark to be descriptive or non-distinctive, the application will be rejected on absolute grounds. The same applies if the mark is of a type that may not be registered. If the applicant submits sufficient evidence of distinctiveness acquired through use, marks that are inherently descriptive or otherwise non-distinctive become registrable.
The application can also be refused on relative grounds if the mark is found to be similar to prior rights such as trademark registrations, registered trade names or copyright. A refusal on relative grounds can be overcome if the holder of the prior rights gives explicit consent to the junior mark’s registration.
Trademark applications shall be submitted to the PRH, which maintains the Finnish Trademark Register. The first phase – examination for formal deficiencies – typically occurs within a month of submission. After the formal phase, a full review of both absolute and relative grounds for refusal is carried out.
The PRH issues no formal notifications, whether on receipt of the application or during the examination phase, except where it finds the application lacking. Where deficiencies are found, the PRH issues an official action instructing the applicant to correct or amend the application. The applicant may apply for an extension, which is automatically granted on first request. Further extensions may be granted if adequate grounds and/or evidence of actual need can be provided.
Protection of a trademark registration commences on the filing date if the application later matures to registration.
Once the PRH deems the application registrable, the mark will be registered and published in the Trademark Journal. If the PRH issues no official actions, the average time from submission of the application to registration is three to four months. The PRH will then issue a registration certificate.
The registered mark remains in force for 10 years from the date of registration, after which it can be renewed for additional 10-year periods. Section 22 of the Trademarks Act provides a six-month grace period, starting from the date of expiration, during which the mark may be renewed for an additional fee. The renewal decision is usually granted within one to two months of the application for renewal.
Under the Trademarks Act, any interested third party may file a formal opposition against a registered mark within two months of the date of publication. If the opposition is not directly deemed unfounded, the PRH will inform the rights holder of the opposition within a few weeks and set a date for it to present a written response. An opposition typically takes one to two years. Should the opponent succeed, the PRH will revoke the registered mark. If either party is dissatisfied with the opposition decision, an appeal may be filed with the Market Court.
Removal from register
The removal of a registered mark from the register can be made through surrender, revocation or invalidation. Requests for surrender are made directly to the PRH, while revocation and invalidation actions must be submitted to the Market Court. A surrender request can be made by the rights holder only, while revocation and invalidation actions can be made by any interested party. Surrender actions usually take around one month; revocation and invalidation actions take between 12 and 18 months, depending on the merits of the case.
The holder of a registered mark may, at any time, request the surrender of its registration wholly or partially. If a pledge has been registered over the mark in question, written consent from the pledgor is also required.
If a registered mark remains unused for a period of five years, any interested party can request the revocation of the registration due to non-use from the Market Court, which will then declare the registration invalid if no grounds for non-use are submitted by the rights holder.
An invalidation action for non-use can be overcome if use of the mark is restarted before the legal proceedings are initiated. However, any use occurring within three months of the date of the claim will not count as actual use if the preparation to use the mark commences after the holder becomes aware that a request for revocation was about to be made. In order to prevent the revocation of a mark, use by the rights holder or with its consent is deemed acceptable.
Further, a registration may be declared invalid if the mark:
- should never have been accepted due to relative or absolute grounds; or
- has lost its distinctiveness or has become misleading or contrary to law, order or morality.
The PRH conducts both identical and similarity searches on registrability. The search reports do not bind the PRH in its future decisions concerning the same mark. The search reports are delivered reasonably swiftly and are inexpensive to order. For instance, the more comprehensive searches (including both similar and identical prior rights) cost approximately €168 per class for word marks and €41 for each subsequent class (excluding taxes).
Since September 2013 the Market Court has had exclusive jurisdiction over civil and administrative IP rights proceedings. Decisions by the Market Court in administrative matters can be appealed to the Supreme Administrative Court; decisions in civil matters can be appealed to the Supreme Court – on condition that these courts grant leave to appeal. Criminal matters have been left outside the competence of the Market Court, with the Helsinki District Court still the competent court in such matters.
The Supreme Court and the Supreme Administrative Court usually grant leave only if the question at hand requires a precedent, which is rare in trademark matters. It is therefore likely that the Market Court will be the only court to try trademark-related matters in Finland.
Proceedings are largely identical for registered and unregistered marks. In practice, trademark infringement cases are usually initiated as civil actions under the Market Court Procedure Act (100/2013), but in serious cases it is also possible to institute criminal proceedings under the Penal Code (39/1889). The Unfair Business Practices Act (1061/1978) gives additional protection for unregistered or registered rights.
The court may prohibit a party infringing a trademark from continuing or repeating the infringement. If the infringement is deliberate or due to negligence, the aggrieved party is entitled to compensation from the defendant for the damage suffered. If the negligence was only slight, the court may assess the compensation to be awarded at its discretion. However, if no negligence took place, the infringing party must pay reasonable compensation for using the trademark.
Under Section 39 of the Trademarks Act, anyone who deliberately infringes the right to a trade symbol protected by this act shall, unless the infringement is punishable as an industrial property rights offence, be subject to a fine for violating the trademark rights. In the case of a registered mark, no criminal penalty may be imposed unless the infringement occurred after the date of registration. However, other penalties are applicable – for example, compensation and damages can be awarded for any infringement that takes place between application and registration.
Under Section 40 of the Trademarks Act, a claim for reasonable compensation and damages can cover only a period of five years before legal proceedings are filed.
At the request of a person whose trademark rights have been infringed, the court may order that, where practicable, an infringing mark attached without authorisation on goods or packaging, leaflets, commercial documents or the like be erased or altered in such a way as to ensure that it can no longer be misused. If this cannot be achieved in any other way, the court will order that the infringing materials be destroyed or modified in a specified manner. Upon request, the court may also order that the material be surrendered to the claimant against payment.
Regardless of whether the infringement is deliberate, the public prosecutor or the court may order that the offending materials be confiscated and that adequate security be provided for any financial damage suffered by the defendant as a result.
Under Section 41(a) of the Trademarks Act, the court may order the defendant to compensate the claimant’s costs in publishing the final and unappealable judgment finding the infringement of trademark rights.
Further, at the request of the rights holder the court may order the service provider of a transmitter, server or other corresponding equipment to suspend the allegedly infringing use of a mark if the suspension cannot be seen as unjust, considering the rights of the alleged infringer, service provider and rights holder.
The swiftest (and most common) remedy against unauthorised trademark use is an injunction, which may initially be granted ex parte. The court may grant an injunction either before or during the main proceedings, to remain in force until the main action has been finally settled. Before an injunction can be enforced, the claimant is usually ordered to provide adequate security for any financial damage suffered by the defendant as a result.
EU Customs Regulation 608/2013 governs the enforcement of trademark rights against counterfeit and pirated goods, and is applicable in Finland. The Finnish customs authorities are generally experienced and have active border policies to combat counterfeiting activities.
The Market Court’s new procedures seek to shorten the duration of trademark proceedings considerably; this was one of the main goals of centralising all IP matters with a single court. The estimated timeframe for Market Court proceedings is between 12 and 18 months; in most cases, the Market Court’s decision will be final.
Permission to appeal Market Court decisions to the Supreme Court in infringement and invalidation matters can be sought within 60 days of the decision being issued. Where the Market Court acts as the appeal court – typically, in cases concerning a mark registration or an opposition – the petition to appeal must be filed before the Supreme Administrative Court within 30 days of the Market Court’s decision. If the leave to appeal is granted, the appeal process can be expected to take approximately 18 months with both aforementioned courts.
Ownership changes and rights transfers
Rights holders may assign their registrations wholly or partially. The assignment of a registered mark is, upon request, recorded in the Trademark Register maintained by the PRH. The assignment deed needs to be signed by the assignor, but no legalisation or notarisation is required.
Rights holders may grant a licence to use a mark to a third party without relinquishing their trademark rights. The licence may be exclusive or non-exclusive, and can be limited substantially or geographically. Licences may be entered in the Trademark Register on request. The recordal can be refused if use of the mark by the licensee is clearly liable to mislead the public. A trademark licence not entered in the register shall not affect a third party that has obtained rights to the mark in good faith. Unless otherwise agreed, the licensee may not transfer its rights to a third party.
Under Finnish law, trademark protection does not exclude the application of other IP rights relating to the mark or symbol registered as a trademark. Therefore, the objects of trademark protection can also be protected by, for example, design rights and copyright, provided that the criteria for protection under each individual IP right are satisfied.
The principles that govern the protection of registered and unregistered marks also apply in cyberspace. Consequently, any potentially infringing activity is assessed within the same framework, insofar as it is possible.
The Domain Name Act (228/2003) was repealed by the Information Society Code (917/2014) on January 1 2015, yet its provisions shall be applied until September 4 2016. Under the act, any business or private entrepreneur may apply for practically any domain name, since the competent authority – the Finnish Communications Regulatory Authority (FICORA) – conducts no screening of trademark or trade name databases in advance. The applicant needs to be Finnish or have an establishment in Finland.
Should a registered domain name infringe another party’s trademark, FICORA may either suspend the domain name for a specified period (up to a maximum of one year) or cancel the registration and transfer it to the claimant. An administrative decision of FICORA may be appealed before the Market Court. It is also possible to initiate civil proceedings before the Market Court in conjunction with this administrative procedure in order to prohibit use of the domain name.
The domain name provisions of the Information Society Code, which will apply from September 5 2016 onwards, do not impose requirements concerning the nationality or establishment of applicants. Under these new provisions, a domain name may also be registered by foreign legal persons, business operators, other associations and natural persons.
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.