Status update: Trademarks with a Reputation in Finland

STATUS UPDATE: TRADE MARKS WITH A REPUTATION IN FINLAND

08.10.2008

Already the Working Group on the Trademark and other Distinctive Sign Legislation, which the Finnish Ministry of Trade and Industry (FMTI) established in 1998, stated that there was a need to look into the possibility of establishing a separate register for trade marks with a level of "fame".

However, the Working Group also acknowledged that this may be a difficult task, as the venture to establish an international register for such marks had been abandoned, and also as the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (Joint Recommendation) could also not be seen to support the establishment of principles that would guide a national register for such marks.

The issue was revisited by the Well-Known Trademarks Committee of the FMTI in the years 2005 and 2006. What prompted the FMTI to set up the Committee was the interest for such discussion in the Finnish industry as well as the National Board of Patents and Registration (NBPR). The Committee's subsequent memorandum states the following:

"According to the Committee, no undisputable need can be shown to exist in Finland for measures to enhance protection of well-known trademarks in particular, by virtue of registration or other similar listing. The Committee considers national measures, with the related legal implications, problematic from e.g. the viewpoint of EU legislation.

[...] The Committee proposes that Finland establish a special list, maintained by the authorities, for distributing knowledge of marks with a reputation, [...] , thus facilitating production of proof. The proposed list would have no legal effects. Gaining protection for widely known trademark has often proven arduous and expensive, because proof of the prerequisites for gaining protection must, in practise, be acquired separately for each individual case. The Committee's proposal strives to respond to this practical problem."

The NBPR as the competent authority for its administration began setting up the List and on 15 August 2007 it was operational.

As the Community legislation does not hold registration as a prerequisite for the extended protection for trade marks with a reputation and the Joint Recommendation also states that "well-known" marks' protection should not depend on registration, it was clear that an entry on the List could not be a prerequisite for protection as a trade mark with a reputation. Rather the List is limited to serving an evidentiary purpose, leaving the requisite element of detriment to be established in traditional proceedings and allowing reputation of a mark to be relied upon even without recordation.

As the NBPR puts it on their website, "the purpose of the list is to serve commerce and industry, agents and all other stakeholders that for one reason or another need information on reputable marks. 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", and further "the purpose of the list is to increase awareness of trademarks with a reputation and thus prevent conflicts. As the registration authority's decisions about the list are an additional information service, they are not decisions that have legal effect".

However, the Finnish practice allows for an extensive ex officio search of potentially conflicting marks, and including the List entries to this search was not a far step for the NBPR to take.

Seeing that the List is not intended to have legal effect, the entries are not relative grounds for refusal and a notification procedure is adopted instead. If the ex officio examination reveals a confusingly similar mark in the List, this fact will be notified to both the applicant and the owner of the earlier trade mark with a reputation whatever the classes in the application. However, the final decision whether to oppose the application or not is left with the owner of the trade mark with a reputation.

For a mark to be entered on the List it is required that it has a reputation in Finland, interpretation of which is to follow the jurisprudence of the Court of Justice of the European Communities. Reputation can be either among a specific target group or all the Finns in general. In assessing the proof of reputation the NBPR will take into account all relevant circumstances, such as the market share, the marketing costs, and the intensity, duration and geographical extent of use.

An entry in the List is valid for five years from the date of entry, renewable for a further period of five years, and a partial or full removal of an entry is possible. Currently, there are 66 applications and registrations on the List, most of which belong to Finnish trade mark owners.