As of 1 May 2021 it is possible to seek revocation of an unused company name from the Finnish Patent and
Registration Office (PRH)¹.
Summary of new proceedings
The new administrative revocation process introduces a less expensive and presumably faster alternative to civil proceedings in the Market Court. The new proceedings are especially useful for seeking partial revocation of company names which have been used for only a part of the registered line of business and which have been cited by the PRH as an obstacle to registration of a trademark or a company name. The PRH charges no fee for such proceedings, while court fees in the Market Court are €2,050.
Revocation of unused company names
The PRH examines relative grounds for refusal ex officio. An earlier company name prevents the registration of a trademark where the applied-for trademark is confusingly similar thereto. A trademark is considered confusingly similar when:
-the company name is identical or similar to the applied-for trademark; and
-the line of business for which the company name is registered is identical or similar to the trademark's list of goods and services.
The new PRH administrative proceedings have been established to enable more efficient revocation of company names which have been registered broadly for 'general business' ('yleistoimiala' in Finnish), which covers all business activity. A company name registered for 'all legal activity' would prevent the registration of a trademark which is identical or similar to the company name, even if the actual line of business for which the name is used is different from the goods and services covered by the trademark application. The new proceedings provide a more effective means of addressing this problem, which up to now would have required a favourable ruling from the Market Court or consent from the owner of the company name.
Partial revocation of company names
The new administrative proceedings also provide a means for seeking partial revocation with respect to a part of the registered business for which the name has not been used. For company names cited against the registration of a trademark, this will often necessitate seeking revocation for only the part which overlaps with the applied list of goods and services. This is also a newly available remedy at the Market Court.
Requirements for revocation of company names or part thereof
The requirements for revocation have not changed; it is the availability of administrative proceedings that is new. As with the Market Court, it is necessary to demonstrate that:
-the company name has not been used for the business in question in the past five years; and
-the owner of the company name has no acceptable reason for such non-use.
Revocation for reasons other than non-use must still be filed as a civil action in the Market Court. The administrative proceedings can be filed by any party which is negatively affected by a registration. Auxiliary company names are treated in the same way as actual company names. In addition to revocation, it is still possible to seek consent for the registration of a trademark from the owner of the cited company name.
Use of new proceedings by applicants of new company names
As well as trademark owners, the new proceedings are welcome news for applicants of new company names, which can make use of the same procedures with regard to company names cited against their applied-for company name.
¹ For further information please see the PRH guidelines.
Puoleeni voi kääntyä erityisesti tavaramerkkeihin liittyvien kysymysten osalta, mutta autan mielelläni löytämään sopivan ratkaisuvaihtoehdon myös laajemmin immateriaalioikeuksien monipuoliselta ja jatkuvasti kehittyvältä kentältä!