New Trademarks Act 1 May 2019

The new Finnish Trademarks Act entered into force on 1 May 2019, and it will be used for the national implementation of the contents in the EU Trade Mark Directive and the Singapore Treaty.

Objective: clear and mordern legislation

The total reform of the Trademarks Act is necessary since the current Trademarks Act is both outdated and non-uniform due to the numerous amendments made to it. The objective is to get a clear and modern Act that enables a completely digital trademark process. In addition, the reform introduces a new type of administrative revocation and invalidation procedure for trademarks. In the future, you will be able to apply for the revocation and invalidation of a trademark at the Finnish Patent and Registration Office (PRH). Currently, the revocation and invalidation process can only be initiated in the Finnish Market Court.

What will change - the key changes

The entry into force of the Act will bring about the following changes. Select a headline for more information on this page:

New ways to present trademarks

The requirement for the graphic representability of a trademark will be removed. This means you will not always have to provide a graphic representation of your trademark in the future. However, you must present your trademark in a manner that is clear, precise and understandable.

The removal of the requirement for graphic representability will make it possible to present trademarks as different files by means of modern technology. This means that, for example, motion marks and multimedia marks will become easier to present.

The new Act will also change the way black and white marks are protected. After the Act enters into force, a trademark in black and white will no longer be considered to cover all colour variations, but instead only the black and white form that it has been presented in. However, this will not affect the protection provided to older marks. Black and white marks that have been applied for before the reform will still be considered to cover the mark in all colour variations.

Trademark applications can only be filed online, and they can be written in English

In the future, applications for the registration and renewal of a trademark can only be filed using an online service. For a special reason, the PRH may also accept paper applications. These are mainly reserved for situations where it would not be considered reasonable to require the application to be submitted online.

In the future, trademark applications can also be submitted in English. This will help many entrepreneurs who do not speak Finnish or Swedish well. However, even if the application is written in English, applicants must choose either Finnish or Swedish as their processing language.

Changes to the way the application process is initiated and applications are processed

The prerequisites for the initiation of a trademark application process will be further restricted. In order to be granted an application date and be processed by the PRH, the application must contain:
  • the applicant’s details
  • a list of the individual goods and services included in the application
  • a description of the mark
      • that can be presented in the Trademark Register
      • from which people can understand the clear and precise target of the protection
  • In addition, the application fee must be paid before the application can be considered to have been submitted to the PRH.

The validity period of a trademark registration will remain the same (10 years) even after the reform, but the period will begin on the application date and not on the registration date, as is the case today.

As a rule, those acting as representatives will no longer have to submit a power of attorney to the PRH. We may only ask for a power of attorney if we have a special reason to doubt the authority of the representative or the scope of their authority.

A welcome change for many applicants is that dismissed applications can be reinstated by paying a reinstatement fee and by correcting the deficiencies in the application. This means that exceeding the deadline for an office action response will not necessarily be as fatal as it is today.

In the future, a pledge or licence can be recorded for the trademark even if it is still in the application phase.

Specifying the classification of goods and services

One of the most notable changes caused by the new Act applies to the classification of goods and services and what a list of goods and services is considered to cover.

Nowadays a list of goods and services is considered to cover the goods and services in their literal sense. However, previous registrations include lists of goods and services where the goods and services are presented in a very vague manner, as was typical for the time. The owners of such registrations will be provided with the opportunity to further specify their lists so that they will meet the new classification regulations.

The list must be specified by the next time the trademark is renewed. After this period, every list of goods and services will be interpreted in the same way, i.e. the list of goods and services will be considered to only cover the goods and services in their literal sense.

New administrative revocation procedure

A significant change is that you can also apply for the revocation and invalidation of a trademark at the PRH. Currently, revocation can only be applied for in the Market Court. In the future, applicants will be able to decide whether they want to submit their application to the Market Court or to the PRH. The objective of this reform is to provide businesses with the option of an efficient and quick administrative procedure. The cancellation procedure used by the PRH will, for the most part, correspond with the current opposition proceedings.

The legislative reform will also affect company names

According to the government proposal, company names could also be cancelled through an administrative procedure at the PRH in the future.

The cancellation could be done either entirely or in part, if the company name has not been used in a specific line of business in the last five years. All companies registered before the entry into force of the new Act will be granted a two-year transition period.

Many companies have a very extensive line of business, which may even cover “all legal business activities". Currently, such an extensive line of business may prevent other companies from registering a trademark that is similar to the unused company name of the original Company.
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Latest update 09.07.2019