How should I respond to an office action?

The following examples explain how you can overcome the obstacles reported in the office action.

Show that your trademark is distinctive

If your trademark is considered to lack distinctive character, get evidence of the use of your mark and of its being well known in your line of business. This proof of use evidence helps you to show that your trademark has acquired distinctive character through use as a special symbol of your products and services.

It is important that your evidence dates from the time before filing the application. The evidence can consist of, for instance, newspaper articles, advertisements or brochures. In those cases, you must also give a report on their circulation. The best proof of use evidence is provided by market surveys which clearly show that your target group considers your mark as a trademark.

Please observe that the material you send us must not contain links. The information behind the links may change, which means we cannot use it as a basis for the processing.

Make sure your evidence is extensive enough and shows how, when and for which goods or services the proposed mark has been used.

Reduce your list of goods and services

If an earlier trademark or company name prevents the registration of your mark, you can reduce your list of goods and services by leaving out all goods or services that are similar to those covered by the earlier registration. If your application no longer concerns goods and services identical or similar to those covered by the earlier mark or company name, the obstacle is usually removed.

If your trademark is considered to lack distinctive character only in respect to certain goods or services in your application, you can leave them out. Then we can register the mark for those goods or services for which it has distinctive character.

Get consent to registration

If an earlier trademark or company name or a surname prevents the registration of your mark, you can usually overcome the obstacle by getting the owners’ consent to the registration. Submit the consent to us in writing.

Revoke earlier registrations

Find out whether the earlier mark has been used during the last five years. If not, and if the owner of the mark cannot give a proper explanation, the registration can be revoked either by the Finnish Market Court or through an administrative procedure at the Finnish Patent and Registration Office (PRH). Similarly, a company name can be revoked under the Finnish Company Names Act. The mark can also be revoked on other grounds, for example as a result of degeneration. This means that the mark has become a generic word.

Read more about the procedure for revocation or invalidation.

After 1 May 2021, a company name can be revoked through an administrative procedure at the PRH. It will then be possible to revoke a company name completely or partly if the name has not been used in a particular field for the last five years.

Please note that you cannot make changes to your trademark in the office action phase. We can only accept minor changes which do not alter the general impression of the mark. If you want to modify the mark to such an extent that you can overcome an obstacle, the changes are not minor. However, you can always file a new application for your altered trademark.

Submit your response in writing

Submit your response to the office action in writing, using our online service (available in Finnish and in Swedish). In this service, the size of a single file can be up to 15 MB and you can attach several files. In terms of delivery reliability and data security, it is safer to submit documents via the online service than by email. You will get a receipt of submission immediately after submitting a document. The document is transferred from the service directly to those who process the matter, which makes the processing at the PRH faster than before.

Alternatively, you can submit your office action response by email to tmposti(at)prh.fi. The total size of your email attachments must not be more than 15 MB.

Recommended file formats

We recommend that you use the following file formats:

  • Documents: PDF (preferably (PDF/A)
  • Images: JPEG
  • Video files: MP4
  • Audio files: MP3
If you use some other file format, you are responsible for making sure that the original files can be converted into a format we can open.

The maximum file size is 15 MB.
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Latest update 24.04.2020