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Main page > Trademarks > How to apply > Conditions of registration

Trademarks

Conditions of registration

Distinctive character

Firstly, a trademark must be distinctive to be valid for registration, as its most important role is to be able to distinguish a certain trader's goods and services from similar goods and services of other traders.

Distinctiveness is assessed in relation to the goods or services for which the trademark is applied for. A word mark is not distinctive if it denotes – as it stands or with only minor alterations or additions – the kind of the goods or services.

• Words that describe a kind (GALOSHES for shoes), quality (EXCELLENT), quantity (TEN), use (RAIN for rainwear), price (CHEAPEST), place of manufacture (SWEDEN for cars), or time of manufacture (1999) are not distinctive. Similarly, a combination of several describing words may also totally lack distinctive character.

There are words such as SALE that cannot be registered, in order to safeguard freedom of advertising. So no one can be granted an exclusive right to them. The distinctive character is assessed in Finnish, Swedish, English and in some other common languages. Thus, an English word describing the qualities of the goods or services may also lack distinctive character.

The requirement for distinctive character also applies to all other types of marks. For instance, a mark consisting of a simple figure such as a circle would not be able to distinguish a trader's goods or services from those of others. A combination of word and figure may also lack distinctive character if it only consists of a simple figure and an expression describing the qualities of the goods or services.

No confusing similarity

Secondly, a trademark must not be liable to be confused with any previous trademark or company name of other proprietors. Thus, when assessing confusing similarity, a proposed trademark is considered in relation to pre-existing rights.

Trademarks are regarded as liable to confusion if they are identical or similar and, in addition, relate to identical or similar goods or services. Accordingly, similar marks that cover different goods do not normally create a likelihood of confusion.

• For instance, it has been possible to register "Eskimo" for ice cream in class 30, although it has previously been registered for clothing in class 25. In spite of the same trademark, no confusion arises because the goods are completely different from each other.

Trademarks with a reputation make an exception to this principle, as they can constitute an obstacle to the registration of non-identical or dissimilar goods or services. With this exception, we aim to protect such marks against damage to and unfair exploitation of their reputation.

When assessing possible confusing similarity, the following may constitute obstacles to registration:

• previous domestic trademarks and applications
• European Community trademarks and applications
• domestic company names applied for or recorded in the Trade Register

You can easily examine such possible obstacles on various free Internet databases.

Trademark databases

You may be able to overcome such obstacle if you get the previous mark or company name proprietor's consent to use the mark. Please note that this consent must be in writing.

Additional obstables to registration are:

1. The mark is contrary to law and order, or to morality.
2. The mark is liable to mislead the public concerning the qualities of the goods or services (for instance, it is geographically misleading).
3. The mark includes, without proper permission, an official symbol or emblem, or something that is liable to be confused with them.
4. The mark is likely to give the impression that it relates to the protected company name, name or likeness of another person, unless it is a person long dead. According to our registration practice, a surname does not, however, constitute an obstacle to registration if it is also a first name or a common noun for an object or a thing.
5. The mark infringes the title, original in character, of another proprietor's protected literary or artistic work, or it infringes another's copyright on such work or another's rights to a photograph or protected design.
6. The mark is liable to be confused with a mark taken into use earlier by another party, and the applicant was aware of that use at the time of filing their application, and had not used this mark before that other party used theirs.
7. The mark is liable to be confused with a registered name of a plant variety.
8. There is an obstacle to registration within the meaning of Council Regulation (EEC) No. 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.

Regarding obstacles 4 to 6, registration may normally be conducted if the party whose right is concerned agrees to the registration of the mark.