Companies’ efforts to build a valuable brand using a strategy of robust trademark protection have been strengthened since September 2013, when the Market Court in Finland began operations as the centralized local court for intellectual property (IP)-related matters in Finland. As a result, the Market Court obtained significant new jurisdiction over all IP-related disputes and administrative appeal matters, excluding criminal suits.
“The reform marked a milestone not only in making Finland the first Nordic country to take a step forward in centralizing IP matters in a specialized court, but also in bringing the adjudication of IP matters under the same roof with matters related to marketing law, such as unfair marketing practices,” says Mikael Segercrantz, Partner and Head of Roschier’s Marketing & Consumer practice.
Before the reform, the Market Court was a special court dealing with cases related to unfair marketing practices, competition, and public procurement. With the new system, the Market Court is now the first instance to hear all civil matters (including precautionary measure matters) concerning trademarks, trade names, designs, copyright and related rights, patents, utility models, integrated circuits, and plant variety rights.
In addition to civil matters, the Market Court has appellate jurisdiction over IP-related administrative matters, including decisions of the Finnish Patent and Registration Office (PRH) concerning industrial property rights, such as appeals relating to IP registrations and oppositions. Appeals against domain name decisions by the Finnish Communications Regulatory Authority (Ficora) now also fall under the jurisdiction of the Market Court.
According to Roschier Senior associate Johanna Flythström, the new regime provides a more efficient procedural framework by replacing the previous fragmented system, in which jurisdiction was split among various courts in different instances.
“While previously, cases such as a complaint concerning slavish imitation of a product package constituting unfair marketing as well as trademark, design, and copyright infringement along with a related damages claim had to be split into separate proceedings in the Market Court and in the District Court(s), the new system deals with all of these claims in a single proceeding,” explains Flythström.
The Market Court may handle different matters in different compositions, ensuring that case-specific subject-matter expertise is also available for the Court.
“As a result, the new regime offers a highly specialized one-stop shop for handling disputes relating to brand protection and marketing law matters,” says Flythström.
“During its first year in operation, the new centralized court has already shown its strength in resolving cases combining matters that would previously have required handling in the first instance in two different proceedings and in two different courts at minimum. This is truly a great leap forward for efficient brand protection,” she adds.
In addition to centralized proceedings in the Market Court, the appeal route has also been streamlined as the Court’s decisions may be appealed - subject to a leave to appeal - directly in the Supreme Court (civil IP and market law matters) or in the Supreme Administrative Court (administrative matters).
Brand protection regime for a new era
The Market Court is taking on only new civil IP cases filed on or after 1 September 2013. Thus, the reform does not affect actions that were already pending before the general courts, such as District Courts. However, administrative IP registration matters pending at the Board of Appeal of the PRH were transferred to the Market Court during a transition period.
After one year in operation Segercrantz says that the new regime has provided more efficient litigation in matters involving both IP and marketing law.
“Our firm had the privilege of being counsel in the first case combining IP and marketing law that came before the Market Court and by August 2014, there were already nine decided trademark or trade name disputes,” says Segercrantz
“Proceedings in brand-related matters have been swift, and for example, the average processing time for decided trademark disputes has been four months in the Market Court,” he continues.
A key objective of the reform has been to concentrate judicial expertise in IP matters in the Market Court.
“One of the goals of the Market Court is to produce even more predictable and higher quality decisions within shorter time frames. This is very important as a timely and high-quality enforcement system is a key tool for brand owners to safeguard their brands,” Flythström explains.
Consequently, in order to achieve the goals of the reform, the new system encourages higher standards of litigation. Moreover, compared to the previous administrative route, prosecuting appeals in the Market Court places increasing demands on litigation expertise.
Procedural expertise takes on increased significance as appeals to Market Court decisions in the Supreme Court in matters of marketing law and contentious IP matters and in the Supreme Administrative Court in administrative matters are subject to obtaining leave to appeal. Thus a majority of the decisions of the Market Court will remain final.
“With only one chance to argue the case and present evidence, thorough preparation as well as sophisticated litigation skills have become more critical priorities. This in turn highlights the increasingly important role of skillful and experienced attorneys throughout the brand lifecycle - from trademark protection to enforcement,” Segercrantz concludes.