MARQUES member Marianna Karjanlahti-Perini shares news of an important amendment to the Finnish Trade Names Act which makes it easier to revoke blocking registrations.

The amendment came into effect on 1 May 2021 and aims to address the problem of overly broad trade name registrations. In Finland it is possible to register trade names for a broad (in fact unlimited) line of business such as “general business line” (“yleistoimiala”) or “all legal activity” (“kaikki laillinen toiminta”).

As the Finnish Office examines relative rights ex officio, prior trade name registrations are often cited as an obstacle to registration. Until now, it was only possible to revoke a trade name due to non-use when the name was not in use at all for the preceding five years.

The amendment makes it possible to file an action for partial revocation of a trade name due to non-use. It also introduces of the possibility to file a revocation action due to non-use before the Finnish Patent and Registration Office. Until now, a civil action in the Market Court has been the only option. Administrative proceedings are usually simpler and cheaper.

In the future the claimant can choose administrative or civil proceedings. However, if there are parallel actions then civil proceedings have priority.

The burden of proving 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 be partially or wholly 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 €2,500. As a general rule, the parties bear their own costs in administrative proceedings, while the losing party pays the winning party’s legal costs in civil proceedings.

The MARQUES Unfair Competition Team has an ongoing project on company names, trade names and other identifiers. So far, reports have been published on Argentina, Austria, Czech Republic, Germany, Russia, Spain, Taiwan and the UK. Find out more on the Team page.

Marianna Karjanlahti-Perini is a European trade mark attorney with Waselius & Wist in Finland, and a MARQUES member

Photo of Helsinki's Senate Square terrace by Camilla Bloom (camillabloom.com) via Helsinki image bank

The April 2021 issue of HouseMARQUES has been published and is available to read on the MARQUES website here.

It includes an interview with Joachim Hofmann of Syngenta (right), who became MARQUES Chair in March for a two-year term. He answers questions about his work in trade marks and the kinds of issues Syngenta faces, his involvement with MARQUES, his priorities as chair, and the key challenges facing IP practitioners.

Joachim took up his post during the Spring Team Meeting. At the same time, Antony Douglass of Specsavers became First Vice-Chair and Claudia Pappas of Thyssenkrupp became Second Vice-Chair.

The latest issue of HouseMARQUES also includes:

• A link to the fourth episode of the Talking MARQUES podcast, which focuses on SMEs to mark World IP Day on 26 April
• Details of the upcoming Coexistence Agreement Workshop and Corporate Focus Group online meetings
• Links to new publications from the Anti-Counterfeiting and Parallel Trade, Unfair Competition and Brands and Marketing Teams
• Latest news from WIPO and EUIPO
• Summaries of recent trade mark and design decisions from the EU General Court
• An update on the 35^th Annual Conference and a round of recent social media posts from MARQUES

To ensure you receive the HouseMARQUES newsletter by email, update your preferences in “My Account”.

The latest episode of the Talking MARQUES podcast focuses on IP and SMEs and is published to mark World IP Day on 26 April 2021.

The podcast can be found on the MARQUES website and on Spotify. It is hosted by James Nurton and features Susie Harris, The Plum Guide (and immediate past chair of MARQUES), and Arthur Artinian, K&L Gates LLP (member of the MARQUES Council and Vice-Chair of the Brands and Marketing Team).

The speakers discuss the challenges that SMEs face, how to boost knowledge and resources and some tips for effective IP management.

Previous episodes of the Talking MARQUES podcast have covered Brexit, fake medicines and CJEU case law.

The theme of this year’s World IP Day is “IP & SMEs: Taking your ideas to market”. WIPO has a dedicated page with links to publications and events, and a message from its Director General Daren Tang, in which he says:

SMEs are the engines, the unsung heroes of our economy. And yet for many of them, there is still a lack of knowledge about how IP can help them translate their ideas into products, and how IP can be a powerful tool for them to not just survive, but to also compete and grow.

SMEs face different challenges in different parts of the world, and how we help them will need to be customized to the needs of your part of the world. But it will be a powerful message for us to send the signal that together we will be supporting them.

The first session in a series on Women and IP takes place virtually this Wednesday, 28 April from 12.00 to 13.30 CET. The sharing sessions are organised by WIPO following a decision taken by the Committee on Development and Intellectual Property.

In this session, WIPO says panellists will address barriers that limit women in using the IP system and explore opportunities to enable them to foster their participation in IP.

Speakers come various countries including El Salvador, Chile, Korea and the United States as well as from WIPO.

The sharing sessions aim to:

• Raise awareness about the need to bridge the existing gender innovation gap and increase participation by women and girls in the innovation ecosystem;
• Promote the results of WIPO’s work in this area; and
• Bring together various stakeholders to share their experience and practices in addressing the barriers faced by women and girls in accessing the IP system.

You can see the event programme here and register for free here (registration is open until 11.59 pm CET on 27 April).

The Court for Intellectual Property Rights (IPR Court) has resolved a case concerning the infringement of exclusive rights to trade marks on a website. The defendants were, respectively, the entrepreneur administering the domain name and the hosting provider of the disputed website. The lawsuit was satisfied, and the compensation was recovered jointly. Sergey Zuykov explains more.

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The plaintiff owns two trade marks (pictured). It sued the entrepreneur and a hosting provider seeking compensation for infringement of the trade marks.

The plaintiff had discovered that the ivenue.ru website sold goods with the two trade marks.

Before the trial, the plaintiff sent the hosting provider of the disputed website, who was an information intermediary, a notice of violation of exclusive rights to trade marks on the website and a demand to take necessary and sufficient measures to stop the violations. It sought the removal of infringing materials from the website or restriction of access to it, but no such measures were taken.

The lawsuit demanding 300,000 Rubles in compensation was sustained by the Decision of the Arbitration Court of the Moscow Region of 23 June 2020, Case No А40-60253/20-27-435, and the Resolution of the Ninth Arbitration Court of Appeal of 29 September 2020 No 09АП-33986/2020, 09АП-33987/2020, Case No А40-60253/2020, Decision of the IPR Court of 1 February 2021 No С01-1488/2020, Case No А40-60253/2020

The cassation appeal was filed by the hosting provider, which did not dispute its status as an information mediator, but indicated that it had taken sufficient measures to eliminate the violation. However, the courts found that the measures taken did not comply with Article 1253.1 of the Civil Code of the Russian Federation. They took into account the fact that the provider failed to provide the claimant with documents received from the owner of the disputed site to confirm the legality of the use of the marks, effectively preventing the possibility of pre-trial dispute resolution.

The courts have indicated that providers have the following obligations:

1) Communicate the claim to the owner of the website;

2) Inform the claimant about the result of the consideration of its claim, namely about its communication to the owner of the website and the response received;

3) Hand over to the claimant the documents received from the owner of the website;

4) Wait for the plaintiff’s response to the transferred documents and, considering its position, decide on further action, including the blocking of the website.

In accordance with Article 1253.1 of the Civil Code, the following categories of persons are recognized as information mediators:

• Persons and corporate entities who transmit material via the internet;
• Persons providing the opportunity to place the material or information necessary to obtain the material or information hereof using an information and telecommunications network; and
• Persons providing the possibility of access to the material in this network.

According to paragraph 77 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of 23 April 2019 No 10, the actions of the provider to remove or block the disputed content or access of the infringer to the website when receiving notice from the right holder of the fact of violation of exclusive rights shall be evaluated. In the absence of actions on the part of the provider within a reasonable period of time to suppress such violations, the court may hold it liable.

Sergey Zuykov is a lawyer with Zuykov and Partners in Russia and a a member of the MARQUES Dispute Resolution Team

The Unfair Competition Team’s project on the protection of company names, trade names and other business identifiers continues to develop, with new reports on Russia and Spain now available.

The latest reports complement those on Argentina, Austria, the Czech Republic, Germany, Taiwan and the UK which are already published.

All can be downloaded from the Team’s page (MARQUES log-in required).

The Russia report was prepared by Yana Tsygankova of Rouse International Limited and the one on Spain by Susana Fernandez Martin of Industria De Diseño Textil, SA (Inditex, SA).

The project is led by Unfair Competition Team members Sascha Abrar (LÖFFEL ABRAR) and Karin Pomaizlova (Taylor Wessing), who have co-authored a multi-jurisdiction study which is also available on the Team page.

More reports are expected to be published soon!

Class 46 readers may be interested in the May session of WIPO’s distance learning course dedicated to the Madrid System. The seven-week course was developed by the Madrid Registry and IP Australia, with the support of the WIPO Academy, and registration closes on Sunday 18 April.

According to WIPO:

It provides a detailed overview of the Madrid System, including its benefits, core principles and various operation processes. The course is aimed at government officials and IP Office staff of current and new members of the Madrid System. It is also intended for individuals interested in trademark registration, such as trademark owners, agents and other IP professionals.

The course starts on 4 May. On successful completion, participants are awarded a WIPO Academy certificate. More information is available in this flyer and enquiries can be sent to WIPO by email.