Trademarks with a reputation

Trademarks with a reputation are trademarks that as a result of use have achieved a more extensive reputation compared to ordinary trademarks. Trademarks with a reputation have stronger protection than normally and it may also concern other goods and services than those for which the mark has been registered.

Go to the List of Trademarks with a Reputation.

The owner of a trademark with a reputation can prohibit the use of a similar mark also for other than identical or similar products if the use means that the repute of the trademark with a reputation is exploited or damaged.

The purpose of this regulation is to protect trademarks with a reputation from exploitation of or damage to their repute.

In case of any disputes, the owner of a trademark with a reputation must be able to prove that the trademark has a reputation.

Read more about trademarks with a reputation:

List of Trademarks with a Reputation

In 2007, the Finnish Patent and Registration Office established a list into which trademarks with a reputation in Finland can be entered on application. The list is one of the PRH’s services that are subject to a fee.

However, the list is a separate database from the Trademark Register.

The purpose of the list is to serve commerce and industry, agents and all other stakeholders that 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.

Marks entered in the list are published in the Trademark Gazette.

The effects of the list in the application phase of the trademark

If the PRH, while processing an ordinary trademark application, finds a confusingly similar mark in the list, this fact will be notified to both the person who filed the trademark application and the owner of the earlier trademark with a reputation. The notification is made regardless of the class(es) in which the mark is sought to be registered.

However, the PRH will not take the trademark in the List of Trademarks with a Reputation into consideration as an obstacle to the registration of the application. It is up to the owner of the trademark with a reputation to decide whether he or she wants to file an opposition later when the applied trademark has been registered. For the owner of the trademark with a reputation, the question is of a supervision service.

The final outcome of an opposition procedure will not automatically change the information contained in the list.

Conditions for entry in the list and proof of the reputation

A condition for entry in the list is that the trademark has a reputation in Finland. The concept of a trademark with a reputation is based on the Trademark Directive.

The goods and/or services for which the trademark is considered to have a reputation are entered in the application and the list. Also, the target group(s) in which the mark has proven reputation will be entered in the list by the PRH. You should therefore indicate in the application the target group in which you with the help of enclosed documents can prove the mark to have a reputation. If you do not give any target group in the application, the PRH considers all Finns to be the target group.

You must also submit proof of the reputation with the application. The PRH assesses the reputation of the mark on the basis of its target group. The PRH will take into account all relevant circumstances, such as the proven reputation of the mark, the market share, the marketing costs, how intensively and how long the mark has been used, and the geographical extension of use.

Examples of how the reputation can be proven are presented below. The list is not exhaustive. You may therefore present any kind of proof that the mark has a reputation. The PRH will take into account all relevant proof that you have submitted with your application.

The trademark must enjoy a reputation in a substantial part of Finland

In terms of geography, the trademark must enjoy a reputation in a substantial part of Finland. On the basis of precedents of the Court of Justice of the European Union, the PRH also requires that the trademark must be familiar to a considerable part of the target group.

Market and reputation surveys as proof

Market and reputation surveys carried out by independent and impartial organisations are particularly good proof.

In order to assess whether the survey is reliable or not, the PRH firstly needs to know who carried out the survey.

Secondly, the PRH wants to know the target group of the survey, the number of interviewees and their age and gender. The target group and its size determine the number of interviewees required. If the target group includes all Finns, this should also be seen in the number of interviewees.

Thirdly, PRH needs to know the survey method and the circumstances in which the survey was done. The survey report must therefore also include the questions asked in the survey. It is also important for the PRH to know the order in which the questions were asked and how they were asked: interviewees’ spontaneous awareness of a mark gives stronger proof that the mark has a reputation than prompted awareness, i.e. a survey where interviewees have been asked leading questions.

You must submit the survey report in its entirety together with your application – no abridged versions are accepted – so that the PRH will be able to assess the value of the proof.

The market share of goods carrying the mark and their position in the market are valuable information when the PRH assesses the reputation of the mark. The market share immediately shows how many people in the target group actually buy the goods that carry the mark.

Advertising and marketing material as proof

You can also show that a trademark has a reputation by using advertising and marketing material. The nature and quantity of the material often show how intensively and how long the trademark has been used, and the geographic extent of the use.

The total amount of money used for advertising and marketing may also be an important part of the proof if you are able to indicate the relative proportion of your marketing budget to the overall marketing costs in your line of business.

You can also use different kinds of certificates of reputation to prove how intensively, how long and how extensively the mark has been used. For example, trader interest organisations or other organisations within the target group issue such certificates. You can also use earlier trademark registrations to give indirect proof of how long and how extensively the mark has been used. Please note however that registration is not a condition for reputation.

Monetary value of the trademark as proof

The value of the trademark may also be an indication of reputation. You can submit details of different kinds of surveys or listings of the value of the trademark, as well as proof of licensing, to show how valuable the mark is.

Annual reports or other material about your activities often gives indirect information about the use of the mark. Sales volume and turnover may also form a part of the proof. When assessing these details, the PRH must however take into account the size of the market and the nature of the goods. That is why you should submit details of the size of the relevant market so that the PRH will be able to compare the sales figures. In other words, the proof of sales mostly supports the proof of market share and the proof of trademark awareness.

Court or authority decisions as proof

Court or authority decisions concerning the reputation of the trademark may also be used as proof. However, the PRH is not bound by such court or authority decisions even though they actually can have an effect on its decisions.

Processing of applications

You must pay the application fee before the application will be processed. The Finnish Act on the Openness of Government Activities (1999/621) is applied to the application documents. The material submitted with the application is therefore open for the public in the same way as the material submitted with an ordinary trademark application.

The PRH may, if necessary, contact you by mail and ask you to supplement, within eight weeks, the information you have submitted. If considered necessary, the PRH may extend the time limit by another eight weeks. If you do not reply within the time limit, the PRH will take a decision on the basis of the material already submitted.

The PRH can, at your request, alter your pending application for example so that the target group is broadened or reduced, or goods or services are added or removed.

The PRH sends you a reasoned notification, if it still, after having received further details from you, finds that the mark cannot be entered in the list. You cannot appeal against such notification.

If the trademark is admitted to the list, the PRH sends you a notification of such entry and asks you to pay an entry fee. If you do not pay the fee, the PRH deems the application to have lapsed and the mark will not be entered in the list. As soon as the PRH has received the payment, the mark is entered in the list and published in the Trademark Gazette. The PRH also notifies you of the entry and sends you an extract from the list.

Validity and renewal

An entry in the list will remain in force for five years from the date of entry. You can renew it for a further period of five years by filing an application with the PRH. You cannot apply earlier than six months before or later than six months after the expiry of the term of five years.

In the renewal process, the trademark owner must submit proof of the reputation of the trademark in the same way as in the application process. When the reputation is assessed, all relevant circumstances will be considered, such as the reputation proven through market and reputation surveys, the market share, the marketing costs of the mark, and how intensively and how long the mark has been used.

Depending on the case, the proof required for the renewal process may be less than in the application process, but the proof must always show that the mark still has a reputation. It is not sufficient proof to merely show that the mark has been used and marketed during the last five years. The proof must also show the coverage of the mark.

For the first renewal, the proof submitted five years earlier with the actual application can still be considered to support the other relevant proof. However, this generally no longer applies to the second renewal, ten years after the original application.

You can also alter the entry in the renewal process: for example, the target group can be broadened or new goods or services can be added. The reason for this is that the fees and processing of a renewal application do not differ from the processing of a completely new application.

Removal from the list

Anyone may request removal of an entry from the list, if a mark has been entered contrary to the conditions in section 5(1)(3) of the Finnish Trademarks Act, or if the reputation of a mark no longer meets the conditions in that provision.

The party who wishes to have the mark removed must send a request to the PRH with the details of the mark and the reasons why it should be removed. He or she must also pay a fee for the request.

A partial removal is also possible.

No right of appeal against decisions concerning the list

The purpose of the list is to increase awareness of trademarks with a reputation and thus prevent conflicts. Accordingly, the PRH’s decisions about the list are not decisions that have legal effect and could be taken to a court of law or other independent judicial organ in accordance with section 21 of the Finnish Constitution.

If the PRH does not admit a trademark to the list, or removes a trademark already entered in the list, the holder of the right may request a re-examination from the PRH. A new application may be successful if there has been a change in the circumstances or if new material is submitted to the PRH together with a new application etc.