The national intellectual property strategy leading to a trade mark reform and a new specialised court in Finland

13 July 2012

Ella Mikkola, Maija Puustinen

While the European Commission is currently evaluating the European trade mark system on an EU level, a national trade mark reform is under preparation in Finland.

The reform is prepared by a working group, established by the Ministry of Employment and the Economy in April 2011, with the purpose of examining the changes required to update the Finnish trade mark law.

Bringing the national Trademark Act in line with the EU case law

Setting up the working group reflects the national intellectual property rights (IPR) strategy which has been established by the government platform in 2009. The objective of the governmental IPR strategy is to develop in Finland a business environment which more efficiently takes into account the significance of intellectual property. Investigating the need to amend the current trade mark law is part of the national IPR strategy.

Before the working group was established, in February 2011 the Ministry of Employment and the Economy commissioned a report on the necessary amendments required for the Finnish trade mark law to be in line with the Trade Mark Directive and the case law by the Court of Justice of the European Union (the report “Selvitys tavaramerkkilain muutostarpeista” drafted by researcher Katja Weckström).

The report pointed out that since the Finnish trade mark Act was passed in 1964, the Act has undergone thirteen reforms, mainly consisting of technical changes required to comply with international obligations, most importantly the EU law and TRIPS agreement. Due to these developments, the current Finnish trade mark Act has become partly unclear. Furthermore, according to the report, the trade mark Act is currently not in line with the Court of Justice of the European Union (“CJEU”) case law, already adopted by the Finnish Supreme Court. The report identified needs for changes especially relating to the scope of trade mark protection, trade marks with a reputation and limitations of the effect of a trade mark.

The term of the Finnish working group will end at the end of June 2012, after which the working group is expected to deliver their proposal for amendments.

A new specialised intellectual property court

Also as a part of the national IPR strategy, the Ministry of Justice of Finland has recently decided on the funding to establish a specialised intellectual property court. According to the proposal, in the future, all intellectual property disputes (except for criminal cases) would be handled in the first instance exclusively by the ‘Market Court’ of Finland which currently hears cases relating to competition law and commercial (‘marketing’) law.

Even today most intellectual property disputes are centralised in one court in Finland because patent and trade mark matters as well as many other industrial property disputes are handled by the special division of the District Court of Helsinki in the first instance. However, currently copyright matters are handled in all District Courts. In addition, certain registration-related matters are handled by the Board of Appeal of the National Board of Patents and Registration, and certain marketing law-related disputes in the ‘Market Court’.

The centralisation of all intellectual property cases into a specialist intellectual property court has been under discussion for several years. The new court may begin its operations as early as during the autumn of 2013.

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