The Great Reputation of your Brand…. can be registered in Finland

(IPRinfo 1/2008)

Mia Pakarinen
Licenciate of Law, Lawyer at Attorneys-at-law Juridia Ltd

European trade mark legislation provides a possibility, but no obligation, to grant well known marks a broader protection compared to other trade marks. Like most European legislations, Finnish trade mark law grants such protection.

In August 2007, The National Board of Patents and Registration of Finland (NBPR) launched a new service product for corporate usage by establishing a list of trade marks that are well known in Finland.

List may have relevance in trials
As the service is not based on legislation, the registration act is not an official decision, and thus without juridical effect or right to appeal. However, it may have relevance for instance in trade mark trials, as a part of the evidence. It can also have a preventive effect, as companies trying to register a mark, which is identical or a similar as one in the list, will be informed by the Office.

According to the NBPR, the purpose of the list is to serve needs of the business community to obtain information about marks with reputation. For instance, the list can be examined as a part of a preliminary research of a new trade mark in order to avoid possible confusion.

The list is entirely separate of the Trade Mark Register, and it is not ex officio considered as an absolute ground for refusal of trade mark registration. However, in its trade mark registration practice, the NBPR will also examine the list and notify both the applicant and the owner of the well known marks about the possible conflict.

Broader protection for listed brands?
Because of the notification practice, the list may have a very significant preventive effect. In practice the list may also broaden the actual scope of protection granted for well known marks in Finland.

For instance, small and medium sized companies often cannot bear the financial risk of legal procedures, and perhaps will rather withdraw their application, even if a legal conflict between the marks would not be self evident or even likely. For these reasons, it may also be more difficult in the future to find a new available trade mark for registration in Finland.

The consequences of the new list naturally depend on several facts. First, how active (or even aggressive) the owners of the well known marks are in protecting their rights.

Secondly, how concise and strict the Office will be in its listing practice. Therefore, we will have to wait for several years until we find out the true consequences of the listings – and also the popularity of the list. But it is already clear that the list offers the owners of the reputed trade marks a practical tool to promote their brand.

Not a free service!
The registration is naturally a strong sign of the power of the brand of a company. However, this handy tool to promote the well known character of your brand is not offered for free. The registration fee is 2 500 euros (1 700 e for application and 800 e for entry). The registration is valid only for a period of 5 years, after which it can be renewed by submitting new evidence and paying the renewal fee of 2 500 e.

In order to be able to enter the list, the trade mark has to have reputation in its target group and the applicant has to show evidence on the reputation. In practice, this means submitting evidence on e.g. market share, amount and extent of the use of the mark, marketing costs etc.

According to the NBPR, the requirements to enter the list are the same as the requirements for protection under article 5 (2) in the Trade Mark Directive of the European Community. The NBPR will also follow the interpretation guidelines issued by the Court of Justice of the European Communities (ECJ) in its rulings.

However, compared to the practice of OHIM (Office for Harmonization in the Internal Market, Trade Marks and Designs), the Finnish case law seems to be rather lenient as regards the requirements of evidence on reputation.
But in course of time the situation may change by the influence of the ECJ case law. It will be interesting to see, how the Finnish Board of Registration will interpret the concept of reputation and the burden of proof of the trade mark owner. As the NBPR does not publish any grounds for its decisions to uphold an application, the follow up of the rulings is, however, not uncomplicated.

The future of the list – fame, or soon forgotten?
Since the opening of the service in August 2007, 50 applications has been filed to the NBPR. In February 2008 only one trade mark has managed to enter the list, namely the famous Finnish coffee brand “Paulig”.

Like “Paulig” also the other brands which have applied are mainly Finnish brands: well known only locally. Strong international brands do not seem to have noticed the possibility of registration yet. Or perhaps not yet found it worthwhile to proceed?
In a few years we will see whether the owners of multinational brands will adapt the “well known registration” as a part of their registration portfolios.

There are, nevertheless, already some international brands to be found on the list of applications: for instance WWF (former World Wildlife Fund) with its famous panda figure has filed an application to register the panda as a well known mark in Finland. Also Red Bull GmBH has filed its famous figure of two fighting red bulls.

Soon we will see how the Finnish NBPR will recognise these “international animal stars” of the brand world!