List of Trademarks with a Reputation in Finland

(IPRinfo 1/2008)

Tuulimarja Myllymäki
Legal advisor
National Board of Patents and Registration

In August 2007 The National Board of Patents and Registration of Finland (”the NBPR”) launched a new service product for corporate usage by establishing a list of trade marks that are well known in Finland. The list may be entered on application, and it is part of the Office’s information services. Thus, it was not necessary to make any amendments to trade mark laws or decrees in Finland.

In 2007, a list of well known trademarks was established at the Patent Office (NBPR) of Finland. Its purpose is to serve commerce and industry, agents and all other stakeholders that need information on reputable marks. Also, its existence is expected to have a preventive effect on trademark disputes. Its effects cannot, however, be assessed until a few years from now.

A Committee, set to study the situation in Finland of well known trademarks, proposed in 2006 that a special list of trademarks with a reputation should be established. The authorities would maintain the list and its purpose would be to disseminate information on trademarks with a reputation and to facilitate the production of proof.

In June 2007, the National Board of Patents and Registration of Finland (NBPR) decided to establish a list into which trademarks with a reputation in Finland can be entered on application. The receipt of applications began in August 2007. The list is one of the NBPR’s services liable to charge, and it was realized within the framework of current legislation. Therefore, the list is a database separate from the Trademark Register.

NBPR will inform trademark applicants of a confusion risk
The purpose of the list is to serve all who for one reason or another need information about reputable marks; particularly commerce, industry and agents. 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.

The practical relevance of the list can be seen when the NBPR, while processing a trademark application, finds a confusingly similar mark in the list. This will be notified to the applicant and the owner of the earlier trademark with a reputation. They both will be notified regardless of the class(es) in which the mark is sought to be registered.

In the registration process, the NBPR 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 EC legislation and its interpretation by the case law of the Court of Justice of the European Communities (ECJ).

The target group(s) in which the mark has a reputation is entered in the list by the NBPR. If no target group is given in the application, the NBPR considers all Finns to be included. Otherwise, the applicant should indicate in the application the target group in which he/ she considers the mark to have a reputation.

The proof(s) of the reputation must be submitted with the application. To be accepted as proof, a market survey (etc), carried out by an impartial organization, must accompany the application in its entirety with complete information on the methods of the survey. Advertising material may be used to show e.g. how intensively, how long and how extensively geographically the mark has been used. The money used for marketing may also be an important part of the proof.

When the NBPR assesses the level of reputation, all relevant circumstances will be considered, such as the market share, the marketing costs, intensity, time, and area of use.

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

Processing of applications
The application fee (1 700 e) must be paid before the application will be processed. The material submitted with the application is public like an ordinary trademark application, as required by the Finnish Act on the Openness of Government Activities.

The NBPR may ask the applicant to supplement the application. If the applicant does not reply within the specified time limit, the NBPR will take a decision on the basis of the material already submitted.

The NBPR sends a reasoned notification to the applicant, if it still, after having received further details from the applicant, finds that the mark cannot be entered in the list. The applicant cannot appeal against such notification. On the other hand, if the mark is admitted to the list, the applicant must pay an entry fee ( 800 e). Then the mark is entered in the list and the entry is published in the Trademark Gazette. The office notifies the applicant of the entry and sends him/her an extract.

Proof of reputation needed every five years
An entry in the list will remain in force for five years. It may be renewed for a further period of five years, but 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 entering the list are examined by the NBPR in the same manner as in the application process, including a request for additional information from the mark owner.

In renewals, the entry can also be altered: for example the target group can be broadened or new goods or services can be added. The fees and the processing of a renewal application do not differ from those of a completely new application.

Request for a removal is payable
Anyone may request an entry to be removed from the list on the grounds that a mark has been entered contrary to the conditions in Section 6(2) of the Finnish Trademarks Act, or that the reputation of the mark no longer meets the conditions in that provision.

To remove a mark, the client has to send a request to the NBPR with the details of the mark and the reasons why it should be removed. He/she must also pay a fee ( 500 e) for the request. A partial removal is also possible. Removed marks are published in the Trademark Gazette.

No right of appeal
The purpose of the list is to increase awareness of trademarks with a reputation and thus prevent conflicts. As the registration authority’s decisions concerning the list are an additional information service (i.e. not stated by the law), they do not have legal effect (in the sense of the Finnish Constitution) so that they could be taken to a court of law or other independent judicial organ.

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

By the end of January 2008, the NBPR had received 50 applications. Until then, one application had been directly admitted to the list: the Paulig trademark for coffee was considered to be a trademark with a reputation in Finland. To continue the processing of the other pending applications, the NBPR is waiting to receive further details from the applicants.

The database of trademarks with a reputation is available at the NBPR website at www.prh.fi.

Hyvin tunnetut tavaramerkit -työryhmän muistio, KTM Julkaisuja 9/ 2006. (in Finnish only), 43 pages. (Memorandum by the Well-Known Trademarks Committee, Publications of the Ministry of Trade and Industry 9/2006)