List of Trademarks with a Reputation

List separate from the Trademark Register

On 6 June 2007, the Finnish Patent and Registration Office (PRH) decided to establish a list into which trademarks with a reputation in Finland can be entered on application. The list is one of the PRH’s services liable to charge, and it was realised within the framework of current legislation.

The list is, in other words, a database separate from the Trademark Register. The list is a public document and anyone may get a copy of it for a charge.

The effects of the list

The purpose of the list is to serve commerce and industry, agents and all other stakeholders that for one reason or another need information on reputable marks. The list is helpful when conducting preliminary examinations or tests of confusing similarity of trademarks, and should thereby have a preventive effect on trademark disputes.

If the PRH, while processing a trademark application, finds a confusingly similar mark in the list, this fact will be notified to both the person who filed the trademark application and the owner of the earlier trademark with a reputation. They are both notified regardless of the class(es) in which the mark is sought to be registered.

In the registration process, the PRH will not take the information in the list into consideration as a relative obstacle. It is therefore up to the owner of the earlier trademark with a reputation to decide whether he or she wants to file an opposition against a later registered trademark. The final outcome of an opposition procedure will not automatically change the information contained in the list.

Conditions for entry

A condition for entry in the list is that the trademark has a reputation in Finland, as defined in Section 6(2) of the Finnish Trademarks Act. The concept of a trademark with a reputation is based on Community legislation, the interpretation of which is supervised by the Court of Justice of the European Communities.

The goods and/or services for which the trademark is considered to have a reputation are entered in the application and the list. Also, the target group(s) in which the mark has proven reputation will be entered in the list by the PRH. You should therefore indicate in the application the target group in which you with the help of enclosed documents can prove the mark to have a reputation. If you do not give any target group in the application, the PRH considers all Finns to be the target group.

You must also submit proof of the reputation with the application. The PRH assesses the reputation of the mark on the basis of its target group. The PRH will take into account all relevant circumstances, such as the market share, the marketing costs, how intensively and how long the mark has been used, and the geographical extension of use.

In terms of geography, the mark must enjoy a reputation in a substantial part of Finland. On the basis of precedents of the Court of Justice of the European Communities, the PRH also requires that the trademark must be familiar to a considerable part of the target group.

The market share of goods carrying the mark and their position in the market are valuable information when the PRH assesses the reputation of the mark. The market share immediately shows, expressed as a percentage of the whole market, how many people in the target group actually buy the goods that carry the mark.

Market and reputation surveys are particularly good proof. Any survey accompanying the application must be carried out by an independent and impartial organisation. In order to assess whether the survey is reliable or not, the PRH firstly needs to know who carried out the survey. Secondly, the PRH wants to know the target group of the survey, the number of interviewees and their age and gender. The size of the target group determines the number of interviewees required; however, if the target group includes all Finns, this should also be seen in the number of interviewees. Thirdly, the PRH needs to know the survey method and the circumstances in which the survey was done. The survey report should therefore also include the questions asked in the survey. It is also important for the PRH to know the order in which the questions were asked and how they were asked: interviewees’ spontaneous awareness of a mark gives stronger proof that the mark has a reputation than prompted awareness, i.e. a survey where interviewees have been asked leading questions. You must in other words submit the survey report in its entirety together with your application – no abridged versions are accepted – so that the PRH will be able to assess the value of the proof.

You can also show that a mark has a reputation by using advertising and marketing material. The nature and quantity of the material often show how intensively and how long the mark has been used, and the geographic extent of the use. The total amount of money used for advertising and marketing may also be an important part of the proof if you are able to indicate the relative proportion of your marketing budget to the overall marketing costs in your line of business. You can also use different kinds of certificates of reputation to prove how intensively, how long and how extensively the mark has been used. For example trader interest organisations or other organisations within the target group issue such certificates. You can also use earlier trademark registrations to give indirect proof of how long and how extensively the mark has been used. Please note however that registration is not a condition for reputation.

The value of the mark may also be an indication of reputation. You can submit details of different kinds of surveys or listings of the value of the mark, as well as proof of licensing, to show how valuable the mark is.

Annual reports or other material about your activities often gives indirect information about the use of the mark. Sales volume and turnover may also form a part of the proof. When assessing these details, the PRH must however take into account the size of the market and the nature of the goods. That is why you should submit details of the size of the relevant market so that the PRH will be able to compare the sales figures. The proof of sales, however, mostly supports the proof of market share and the proof of trademark awareness.

Court or authority decisions concerning the reputation of the mark may also be used as proof. The PRH is not however bound by such court or authority decisions even though they actually can have an effect on its decisions.

The list above is by no means exhaustive. You may therefore present any kind of proof that the mark has a reputation. The PRH will take into account all relevant proof that you have submitted with your application.

Marks entered in the list or removed from the list are published in the Trademark Gazette.

Processing of applications

You must pay the application fee before the application will be processed. The Finnish Act on the Openness of Government Activities (1999/621) is applied to the application documents. The material submitted with the application is therefore open for the public in the same way as the material submitted with an ordinary trademark application.

The PRH may, if necessary, contact you by mail and ask you to supplement, within 8 weeks, the information you have submitted. If considered necessary, the PRH may extend the time limit by another 8 weeks. If you do not reply within the time limit, the PRH will take a decision on the basis of the material already submitted.

The PRH can, at your request, alter your pending application for example so that the target group is broadened or reduced, or goods or services are added or removed.

The PRH sends you a reasoned notification, if it still, after having received further details from you, finds that the mark cannot be entered in the list. You cannot appeal against such notification. If the mark is admitted to the list, the PRH sends you a notification of such entry and asks you to pay an entry fee of 800 euros. If you do not pay the fee, the PRH deems the application to have lapsed and the mark will not be entered in the list. As soon as the PRH has received the payment, the mark is entered in the list and the entry is published in the Trademark Gazette. The PRH also notifies you of the entry and sends you an extract from the list.

Validity and renewal

An entry in the list will remain in force for five years from the date of entry. You can renew it for a further period of five years by filing an application with the PRH. You cannot apply earlier than six months before or later than six months after the expiry of the term of five years.

In the renewal process, the trademark owner has to submit proof of the reputation of the mark in the same way as in the application process. However, when renewing an entry, the proof may be lesser, depending on the case. Also the conditions for entry in the list are examined by the PRH in the same manner as in the application process. The PRH may therefore request additional information from the mark owner.

You can also alter the entry in the renewal process: for example the target group can be broadened or new goods or services can be added. The reason for this is that the fees and processing of a renewal application do not differ from the processing of a completely new application.

Removal from the list

Anyone may request removal of an entry from the list, if a mark has been entered contrary to the conditions in Section 6(2) of the Finnish Trademarks Act, or if the reputation of a mark no longer meets the conditions in that provision. The party who wishes to have the mark removed has to send a request to the PRH with the details of the mark and the reasons why it should be removed. He or she must also pay a fee of 500 euros for the request. A partial removal is also possible.

No right of appeal against decisions concerning the list

The purpose of the list is to increase awareness of trademarks with a reputation and thus prevent conflicts. As the registration authority’s decisions about the list are an additional information service, they are not decisions that have legal effect and could be taken to a court of law or other independent judicial organ in accordance with Section 21 of the Finnish Constitution.

If the PRH does not admit a trademark to the list, or removes a trademark already entered in the list, the holder of the right may request a re-examination from the PRH. A new application may be successful if there has been a change in the circumstances or if new material is submitted to the PRH together with a new application etc.

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Latest update 09.01.2014