In connection with the reform of the Finnish Trademarks Act in 2019, the Finnish Trade Names Act was also amended. The amendment introduces a possibility to partially revoke a trade name due to non-use by filing an action in administrative proceedings with the Finnish Patent and Registration Office (“Office”), as an alternative to civil proceedings.
Background to the amendments
Until now it has only been possible to revoke a trade name due to non-use when the trade name has not been in use at all (the company has had no business activities) during the preceding five years. Simultaneously it has been (and still is) possible to register trade names for a broad (in fact unlimited) line of business such as “general business line” (in Finnish “yleistoimiala”) or “all legal activity” (in Finnish “kaikki laillinen toiminta”). As the Office examines ex officio prior rights, prior trade name registrations are often cited as an obstacle to registration of later trademark applications and trade name notifications, even though the actual line of business of the parties in practice have been completely different. In such case the applicant may have had no other alternative than to ask for a consent from the holder of the prior right, to try to overcome the cited obstacle. If refused, the applicant was left with basically no means to proceed with the planned trademark or trade name application.
Partial revocation of trade names
In order to at least partly overcome the problem caused by overly broad trade name registrations. the possibility to file an action for partial revocation of a trade name due to non-use is now introduced. The amendment is a significant improvement as it implies that it will be clearly easier to overcome blocking trade name registrations.
Revocation of a trade name in administrative proceeding
In order to further lower the threshold for overcoming obstacles caused by overly broad trade name registrations, the possibility to file a revocation action due to non-use before the Office is simultaneously introduced, while civil action in the Market Court has been the only alternative until now.
It is up to the claimant to choose whether to initiate administrative or civil proceedings. Civil proceedings do always, however, have a priority in relation to administrative proceedings in the sense that if a court proceeding concerning the same trademark or name are initiated between the same parties, the proceedings at the Office will be terminated.
Administrative revocation proceeding is, however, meant to be a lighter and more cost-efficient alternative to civil revocation proceedings especially in clear non-use cases. The burden of proof of genuine use of a trade name for a certain line of business lies with its holder. If the company does not file any response or is not able to prove genuine use for a particular line of business, the trade name will partially or whole be revoked provided the application is not manifestly unfounded.
The Office charges no fee for revocation proceedings while the Market Court fee for bringing a civil action is EUR 2 500. As a main rule the parties bear their own costs in administrative proceedings, whereas the losing party pays the winning party’s legal costs in civil proceedings.
Our partner Åsa Krook was a member of the working group appointed by the Ministry of Employment and the Economy for the revision of the old Finnish Trademark Act and Trade Names Act.