August 14, 2019

Finland and France update their Trademark Laws

The intellectual property office of Finland (PRH), as well as of France (INPI), have made significant changes to their trademark laws. As such, Finland have implemented amendments following recently updated EU legislative framework regarding trademarks, directing member states towards a more unified trademark system and enforcing the Singapore Treaty on the Law of Trademarks.

The amendments to Finnish trademark law entered into force on May 1, 2019, spanning several areas of the trademark registration process. Alongside fellow EU member states, Finland has abolished the graphical representation requirement for trademarks. Applicants will now be able to represent their trademarks through other methods, such as sound, multimedia, colour, shapes and movements. In addition, marks filed in black and white after May 1, 2019, will now only be registered as such, and will not extend to any colour forms of the same mark. Trademarks registered prior to the new Act, however, will continue to cover the full spectrum of colours including black and white.

Finland will now also allow for applications to be filed in English, however, it is worth noting that the processing languages remain either Finnish or Swedish. In addition, the IP office will no longer accept paper or email applications, instead opting solely for the online application service. This also applies to trademark renewals, which must now actively be applied for as opposed to the previous method of simply paying a renewal fee.

When filing requests for renewal, an application should also be made to specify goods or services for trademarks filed prior to January 1, 2014. Non-filing of the specification may result in the restriction of the trademark’s scope of protection.

Furthermore, the procedure for oppositions based on a previously registered trademark has been amended. As such, applicants may now request evidence of serious use of the trademark from the opposing party. Additionally, the ten-year validity period of a trademark will now begin on the filing date as opposed to the previous registration date.

France have also published their new legislation with the aim of implementing the directives, and these will enter into force after the adoption of decrees over the coming months. The French law No. 2019-486 of May 22, 2019 incorporates new procedural structure as to the filing and protection of trademarks. All invalidation and revocation procedures must have previously been brought before a civil court, however, the new legislation allows for IPR holders to address such challenges directly to the IP office of France. This method will allow for an expedited and more affordable process, taking an estimated 6 months in total for trademarks. Additionally, the new legislation has amended certain provisions in relation to utility models. As such, the validity term of a utility model has been extended from 6 to 10 years as of the filing date. It will also now be possible to convert a utility model application to that of a patent. The French Government are set to adopt several decrees over the few months which will enforce the new law to its full extent.

Author: Danielle Carvey