New Trademarks Act Coming Up Next Year
What do the Beatles achieving their first number one hit on the Billboard Hot 100, all the cool kids wearing bell bottoms, and the Finnish Trademarks Act have in common? The answer has four digits: 1964.
Our current Trademarks Act entered into force in 1964 and has undergone several changes over the years. The 1964 Trademarks Act will now be laid to well-deserved rest, as the Finnish Government recently proposed a new Trademarks Act to take effect next January (Government Bill 201/2018). The new legislation will replace the current 54-year-old act, transpose the EU Trademark Directive 2015/2436 into national law, and implement the Singapore Treaty. Below is a quick summary of key changes:
- Elimination of graphical representation. The elimination of the graphical representation requirement from the definition of trademarks is one of the key changes brought by the new Act. The new Act sets two requirements for a trademark: it must (i) be able to distinguish the goods or services of a company from those of other companies and (ii) be in a form that may be represented in the trademark register enabling authorities and the public to determine what is being protected. Under the new Act, a trademark could consist of any signs such as words, designs, colors, shapes, or sounds that fulfill the two prerequisites. This means that new types of marks such as motion, multimedia, and hologram marks could also be accepted.
- Black and white trademarks. So far, the common practice has been to register figurative marks in black and white, as they could be relied upon to cover all color variations. However, the new Act only grants protection to the specific color represented in a trademark application, meaning that a black and white application would only cover a black and white variation of the mark. This new interpretation will not affect black and white marks already registered – they continue to protect all color variations.
- Classification. The classification of goods and services is regulated more closely in the new Act. Applicants are required to clearly identify the goods and services they wish to protect when applying for a new trademark. A reference to a class heading no longer means that the application covers all goods or services in that class. Trademark holders renewing their marks after the new Act takes effect are advised to pay close attention to classification to avoid narrowing the scope of protection of their registered trademarks.
- Goods in transit. The new Act clarifies the scope of a trademark right with regard to goods in transit. A trademark proprietor would be entitled to prohibit third parties from importing goods into Finland in the course of commercial activity, even when those goods would not be placed on the market in Finland. In order for the trademark holder to exercise this right, the goods would have to bear the same or a highly similar mark as the one registered by the trademark holder. This exclusive right conferred by a trademark would expire if the customs declarant or holder of the goods provides evidence that the trademark proprietor is not entitled to prohibit the placing of the goods on the market in the country of their final destination.
- Opposition. Currently, the validity of an earlier trademark may be challenged by way of a non-use invalidation claim. The new Act simplifies opposition proceedings by providing the trademark applicant the opportunity to request the opponent to prove the use of an earlier trademark that has been registered more than five years ago.
- Administrative invalidation and revocation. In addition to the current practice of filing invalidation and revocation claims to the Market Court, the Act introduces a new alternate administrative process where claims for invalidation and revocation may be filed to the Finnish Patent and Registration Office.
Many a moon has passed since 1964. The legislative overhaul goes beyond nips and tucks and introduces a welcome reconstruction to our trademark system. The new Trademark Act is now awaiting parliamentary approval and is expected to come into force on 1 January 2019.
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