The new EU Trademark Directive is set to be implemented by January 15 2019. National trademark legislation in EU member states will therefore undergo significant reforms in the near future.
However, the Finnish Trademarks Act does not correspond entirely to the provisions of the earlier Trademark Directive and European Court of Justice case law. Finland is therefore making the most urgent amendments to the outdated Trademarks Act before national implementation of the new directive.
A government proposal regarding the amendments to the act was presented to Parliament on March 3 2016. The amendments are expected to enter into force on September 1 2016. Interpretation of the national trademark legislation will become easier and more unambiguous for both courts and trademark owners.
Outdated Trademarks Act 1964
The Trademarks Act dates from 1964 and has naturally been subject to several partial reforms over the years. The need for a complete reform of the act was acknowledged in a 2001 ministry report. Two consecutive ministry reports were drafted in the early 2010s, and at the same time both Sweden and Norway put into effect their respective national trademark law reforms.
As the reform has not been a top priority for the Ministry of Employment and the Economy (the current ministry responsible for industrial property rights), a broad reform of the act has been postponed several times. In the newly presented government proposal, it has been considered to be more practical to carry out a complete reform later on in connection with implementation of the new EU Trademark Directive.
Primacy of EU law
According to the principle of primacy of EU law, EU legislation and principles set out in case law take precedence over national laws if there is a conflict between them. Currently, the Finnish Trademarks Act is not considered to be up to date as regards certain aspects of the directive and case law. The proposed amendments would not alter the legal state as such, as the Finnish courts have to date applied the directive and case law directly where the act has proved insufficient.
The amendments will clarify the legal state and better communicate the directive and prevailing interpretations of EU case law. Chapter 1 of the act, which contains general provisions, will be renewed as a whole. Other provisions regarding registration of trademarks, among other things, will also be amended.
The proposal contains, among other things, the following amendments to the Trademarks Act:
- A provision regarding double identity will be added. Proof of likelihood of confusion will not be required when both the trademarks and the goods or services are identical.
- The definition of 'distinctiveness' will be specified. For instance, the law will contain a provision stating that acquiring distinctiveness through use of a mark is possible.
- It will be specifically stated in the act that the proprietor of a trademark does not have the right to prohibit activities falling under the limitations and taking place in accordance with honest practices in industrial or commercial matters.
- The concept of bad faith as grounds for refusal of a registration will be added to the act. Registration is not possible if the applicant has acted in bad faith. The provision will also cover situations where the use of the earlier mark has taken place abroad.
International registration procedure
Finland is a party to the Madrid Protocol. Problems have risen in interpreting the Finnish Trademarks Act when the owner of an international registration has not submitted a statement relating to a preliminary refusal which the Finnish Patent and Registration Office has issued as a result of an opposition.
It will be clarified that mere notification to the World Intellectual Property Organisation does not signify that the Finnish Patent and Registration Office has made a decision, or that it has a view regarding the contents of the opposition. After the notification, the office will examine the opposition, regardless of whether the owner has submitted a statement to the refusal.
For further information on this topic please contact Inari Kinnunen by telephone (+358 9 681700) or email (email@example.com). The Dittmar & Indrenius website can be accessed at www.dittmar.fi.
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