Finland: Intellectual Property

(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);

Inventions can be protected by:

• Patents, provided that the inventions meet the requirements for novelty, inventive step, and industrial application.
• Supplementary protection certificates (SPCs) are available for patents protecting medicinal or plant protection products, provided that the product is protected by a basic patent in force, has obtained a valid market authorisation and is not previously subject of such certificate.
• Utility models, provided that the inventions meet the requirements for novelty, inventive step, and industrial application. Methods cannot be protected with utility models.
• Trade secrets, provided that the information is not generally known or easily accessible to persons normally handling such information and has economic value in the course of trade because of that, and the lawful holder of the information has taken reasonable steps to protect the information.
• Technical instructions, provided that the information is not generally known.

(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);

Brands can be protected by:

• Registered trademarks, collective marks, and certification marks.
• Unregistered trademarks, provided that they are generally known in Finland in their target group as a sign of the goods or services of the proprietor.
• Trade names.
• Unregistered trade names and secondary signs, provided that they are generally known in their target group.
• Designations of origin (PDOs), geographical indications (GIs) and traditional speciality guaranteed (TSGs).
• Domain names.
• Provisions under the Unfair Business Practices Act (interpreted in accordance with the ICC Marketing Code) may also protect against slavish imitation and exploitation of goodwill.

(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).

Other creations, technology and proprietary interests can be protected by:

• Copyright to original works.
• Rights related to copyright (i.e. neighbouring rights), including rights of performing artists, producers of sound and video recordings, radio and television organisations, producers of catalogues and databases, photographers as well as press agencies’ rights to press reports.
• Registered and unregistered design rights, provided that the designs meet the requirements for novelty and individual character.
• Rights to layout-designs of integrated circuits, provided that the layout-design is original.
• Rights to plant varieties, provided that the variety is novel, distinct from other known varieties, uniform as regards plant growths, and stable as regards its relevant characteristics.
• Domain names.
• Trade secrets and technical instructions as explained above in Section 1 (a).

The above-mentioned intellectual property rights are in force and can be renewed as follows:

• Patents: maximum term of 20 years from the filing date subject to the payment of annual fees.
• SPCs: may be granted for five years from the expiry of the patent (which has been in force for 20 years). SPCs may be extended for additional six months in case the medicinal product’s suitability has been tested according to Paediatric Investigation Plan (PIP).
• Utility models: maximum term of 10 years from the filing date. Utility models are initially in force for four years from the filing date and may be renewed first for four years and then for additional two years.
• Trade secrets and technical information: unlimited term – trade secrets and technical information are protected as long as they fulfil the requirements for protection under the Trade Secrets Act.
• Registered trademarks, collective marks and certification marks: 10 years at a time but can be renewed indefinitely. Unregistered trademarks are protected as long as they meet the requirements for protection under the Trademarks Act.
• Trade names: unlimited term – trade names will remain in force until they are removed from the register. Unregistered trade names and secondary signs are protected as long as they meet the requirements for protection under the Trade Names Act.
• PDOs, GIs and TSGs: unlimited term.
• Copyright: in most cases, 70 years from the year of the author’s death.
• Neighbouring rights: ranging from 15 to 70 years depending on the right.
• Design rights: maximum term of 25 years. Design rights are initially in force for five years from the filing date, and the registration can be renewed four times for a five-year period. Unregistered Community designs are protected for a period of three years as of the date on which the design was first made available to the public in the EU.
• Rights to layout-designs of integrated circuits: 10 years from the year following the filing date or the date on which the layout-design was first distributed to the public, whichever comes first.
• Rights to plant varieties: maximum term of 30 years from the year following the grant of the right, subject to the payment of annual fees.
• Domain names: at least a year, can be renewed for several years at a time and indefinitely.

• Patents: the inventor as a main rule. However, the employer is entitled to reserve rights to the invention by which creates obligation to pay the inventor a reasonable compensation in accordance with the Act on the Right in Employee Inventions.
• Rights to layout-designs of integrated circuits: the creator as a main rule. However, the employer is the first owner in case a layout-design has been created within the scope of duties in an employment situation, unless otherwise agreed.
• Other intellectual property rights capable of being registered (including, inter alia, utility models, trademarks, and design rights): the applicant.
• Copyright and neighbouring rights: the author or creator as a main rule. However, if a computer program and a work directly associated with it or a database have been created in the scope of duties in an employment relation, the copyright shall pass to the employer. There are also limitations to the rights of the creator in relation to commissioned portraits.
• Trade secrets: the party whose interest it is to ensure that the trade secret remains protected and to whose business it relates to. In case outsourced assignments are carried out under a commission, confidentiality agreements are required in order to meet the requirements for trade secrets.

Patents, SPCs, utility models, trademarks, collective marks, certification marks, trade names, PDOs, GIs, TSGs, design rights, rights to layout-designs of integrated circuits, plant varieties, and domain names can be registered.

• Patents: the inventor or the rightful owner or their representative may file an application to the Finnish Patent and Registration Office (PRH). In case the applicant is not domiciled in Finland, the applicant must appoint a representative residing in the European Economic Area. The examination stage consists of formal and technical examination. Upon acceptance of the application and payment of the publication fee, the patent is granted by publishing it in the Patent Gazette. The grant is followed by an opposition period of nine months.
• SPCs: the owner of the basic patent in force or the rightful owner or their representative can file an application to the PRH within six months from the first market authorisation in relation to Finland or the grant of basic patent, whichever has occurred later. In case the applicant is not domiciled in Finland, the applicant must appoint a representative residing in the European Economic Area. The examination stage consists of formal and technical examination. Upon acceptance of the application and payment of the application fee, the SPC is granted and published in the Patent Gazette.
• Utility models: the inventor or the rightful owner or their representative can file an application to the PRH. The examination stage consists of formal examination, as well as the registrability check to ensure that the invention relates to a technical solution that is industrially applicable. However, novelty or inventive step are not examined ex officio. Upon acceptance of the application, the utility model is registered in the utility model register and published in the Utility Model Gazette.
• Trademarks: anyone can file an application to the PRH. In case the applicant does not have domicile or registered office in the European Economic Area, the applicant must appoint a representative residing in the area. The goods and services must be specified using the Nice classification. The examination stage consists of formal examination, as well as examining absolute and relative grounds for refusal ex officio. Upon acceptance of the application, the trademark is registered in the trademark register and published in the Trademarks Gazette. The publication is followed by an opposition period of two months.
• Collective and certification marks: applications can be filed to the PRH. Collective marks can be applied by a legal person having members. Certification marks can be applied by entities which inspect or supervise the goods or services identified in the application for a mark or issue regulations relating thereto and do not engage in any business involving the provision of certified goods and services. The application process is otherwise similar to trademarks, but the applicant must enclose a statement of the nature of the applicant’s activities as well as the rules of the legal entity.
• Trade names: an application can be made to the PRH when establishing a business or later when requesting changes in the trade register in relation to the said business. PRH checks that the trade name meets certain requirements under law, such as distinctiveness and that it is not to be confused with earlier registered trade names and trademarks. Upon acceptance of the application, the trade name is entered in the trade register.
• PDOs, GIs and TSGs: multiple producers together or the organisation representing the producers can file an application to the Finnish Food Authority. Only in exceptional circumstances a single producer can file an application. The registration process consists of a national phase before the Finnish Food Authority, which publishes applications in its website. Third parties may oppose the registration within 30 days of the publication of the application. Upon acceptance of the application, the registration is published, and the registration decision is appealable. In case the decision is not appealed, the application is further examined by the European Commission and published in the Official Journal of the European Union. The publication is followed by an opposition period of three months. Following the opposition period, the European Commission either accepts or refuses the registration. Upon acceptance of the application, the registration is published in the Official Journal of the European Union.
• Design rights: the designer or the rightful owner or their representative can file an application to the PRH. In case the applicant does not have domicile or registered office in the European Economic Area, the applicant must appoint a representative residing in the area. The protected articles can be specified using the Locarno classification. The examination stage consists of formal examination, as well as examining obstacles for refusal ex officio. Upon acceptance of the application, the design right is registered in the design register and published in the Design Gazette. The publication is followed by an opposition period of two months.
• Rights to layout-designs of integrated circuits: the creator or the rightful owner or their representative can file an application to the PRH. The application must be made within two years from the date the layout-design was first distributed to the public. In case the applicant is not domiciled in Finland, the applicant must appoint a representative residing in the European Economic Area. The PRH examines that the application relates to the layout-design of an integrated circuit and that the formal requirements are fulfilled. Upon acceptance of the application, the layout-design is entered in the register of layout-designs.
• Rights to plant varieties: the breeder or the rightful owner or their representative can file an application to the Finnish Food Authority. The Finnish Food Authority checks whether the plant variety fulfils the requirements for the registration, including possibly arranging an appropriate test in a testing facility. The application is published, after which third parties may oppose the registration within three months. Upon acceptance of the application, the application is published and entered in the register of plant breeder’s rights.
• Domain names: the ‘.fi’ domain name can be registered to a legal person or a private person through a registrar. The domain name may contain 2–63 characters. The domain name may not correspond to a protected name or trademark, unless the domain name holder has an acceptable reason for the domain name. The domain name may not be similar to a protected name or trademark if it has only been registered with the clear intent of obtaining benefit or harming another.

Please note that it is also possible to apply for European patents from the European Patent Office (EPO) and international patents through PCT system. It is also possible to apply for EU trademarks, collective marks and certification marks from European Intellectual Property Office (EUIPO). International trademarks can be applied from the World Intellectual Property Organization (WIPO). Registered Community Designs (RCDs) can be applied from the EUIPO. Community plant variety rights can be applied from the Community Plant Variety Office (CPVO). Other than ‘.fi’ domain names are also subject to international proceedings.

The above-mentioned proceedings have been limited outside the scope of this Finnish chapter, even though Finland is a member of the European Union and it is possible to designate international registrations to Finland.

• Patents: less than three years. The first technical office action is usually provided within eight months of the filing date.
• Utility models: three months in average.
• Trademarks, collective and certification marks: one month in average.
• Trade names: a few weeks.
• PDOs, GIs and TSGs: from two to four years in average.
• Design rights: under six months in average.
• Rights to layout-designs of integrated circuits: less than three years. The first technical office action is usually provided within eight months of the filing date.
• Rights to plant varieties: from two to four years depending on the plant variety.
• Domain names: a few days depending on the registrar.

Third parties may submit their comments to the Finnish registration authorities prior to the registration of an intellectual property right. However, the Finnish authorities have full discretion on taking third parties’ comments into account. Submitting comments does not give third parties legal standing in relation to the proceedings.

As explained above in Section 5, third parties may file oppositions against the registration of patents, trademarks, and design rights. By filing an opposition against the registration, third parties become parties in the opposition proceedings. Furthermore, it is possible to object the registration of PDOs, GIs and TSGs, and plant varieties as specified in Section 5.

Please see Section 29 below on how the registration can be challenged after the registration process.

If the PRH provisionally refuses the application, the applicant will have an opportunity to correct the deficiencies and/or submit its response to the provisional refusal. Once the PRH gives its final decision, the decision can be appealed to the Market Court within 60 days of the decision. The Market Court’s decision can be further appealed to the Supreme Administrative Court of Finland, provided that the Supreme Administrative Court grants leave to appeal.

The Finnish Food Authority usually gives an opportunity to correct any deficiencies, and the decisions are appealable.

The current application and renewal fees are set out below. Please consult a local representative for current information and to enquire what other fees may occur.

• Patents: the application fee for including up to 15 claims is EUR 400 when filed online (additional fee of EUR 50 is charged for each subsequent claim). The renewal fee increases gradually from EUR 200 (3^rd year) to EUR 900 (20^th year).
• SPCs: the application fee is EUR 500 and the annual fee is EUR 900 for each year. The application fee for an extension of the term of the SPC is EUR 500.
• Utility models: the registration fee for utility models including up to five claims is EUR 200 when filed online (additional fee of EUR 20 is charged for each subsequent claim). Renewal fee for years 5–8 is EUR 250 and renewal fee for years 9–10 is EUR 200.
• Trademarks: the application fee is EUR 225 for one class when filed online (additional fee of EUR 100 is charged for each subsequent class). Renewal fee is EUR 225 in one class when filed online (additional fee of EUR 100 is charged for each subsequent class) in every ten years.
• Collective and certification marks: the application fee is EUR 300 for one class when filed online (additional fee of EUR 100 is charged for each subsequent class). Renewal fee is EUR 300 in one class when filed online (additional fee of EUR 100 is charged for each subsequent class) in every ten years.
• Trade names: the application fee typically ranges from EUR 60 to EUR 320 when filed online, but depends on multiple factors (the type of company, whether the company already exists, whether it is an auxiliary trade name, or whether it is the main trade name and the articles of association need to be changed accordingly).
• PDOs, GIs and TSGs: there is no application fee.
• Design rights: the application fee is EUR 250 for one class when filed online (additional fee of EUR 55 is charged for each subsequent class). Renewal fee is EUR 380 for one class (additional fee of EUR 55 is charged for each subsequent class).
• Layout-designs of integrated circuits: the registration fee is EUR 450.
• Rights to plant varieties: the application fee is EUR 471 and the annual fee is EUR 354.
• Domain names: depends on the registrar, but typically EUR 15–20 per year.

Failure to pay renewal or annual fees can lead to the expiry of the registrations. However, there are grace periods available in certain cases.

There are no specific requirements regarding the assignment, but certain assignments are only valid if registered. In addition, certain requirements need to be fulfilled in order to register the assignment. For instance, it is required that a copy of a document proving the assignment of trademark or design right is submitted to the PRH.

There is no requirement to register the assignment, but it is highly recommended. In case the transfer has not been registered, it shall not be binding on a third party acting in good faith or on the creditors of the proprietor. Furthermore, certain enforcement proceedings can only be initiated by the registered assignee or by showing that the assignment is pending. The registration will also allow the registration authority to send notifications to the correct proprietor.

There are no specific requirements for licensing under law. However, as a main rule, the licensees do not have a right to grant sublicenses without the licensor’s permission. In addition, certain requirements need to be fulfilled in order to register the licence. For instance, it is required that a copy of the trademark or design licence agreement or a document confirming the scope of the license is submitted to the PRH.

There is no requirement to register the licence, but it is highly recommended. In case the licence has not been registered, it shall not be binding on a third party acting in good faith or on the creditors of the proprietor. Certain proceedings can only be initiated by showing title to the right.

In general, there are no specific rights given to the licensees under law. Exclusive and non-exclusive licensees can both have a legal standing in the enforcement proceedings, depending on the provisions of the licence agreement.

Unless otherwise agreed, an exclusive trademark licensee may institute trademark infringement proceedings if the proprietor of the trademark, after learning of the trademark infringement, does not itself bring infringement proceedings within a reasonable period of time.

Criminal sanctions are available for infringement of copyright, neighbouring rights, trademarks, patents, registered designs, the layout-designs of integrated circuits, utility models, plant variety rights, and trade secrets. The minimum penalty shall be a fine and the maximum penalty imprisonment for at most two years.

It is required that the general prerequisites of criminal liability are fulfilled, and that the infringement is done in a manner conducive to causing considerable financial loss to a person holding a right. In order to invoke criminal sanctions, the right holder needs to file a police report. The police may conduct a pre-trial investigation, after which the prosecutor conducts a consideration of charges. Criminal cases are handled by the local district courts. The criminal proceedings relating to intellectual property rights are relatively uncommon in Finland.

a) Civil proceedings

In case of an infringement of any intellectual property rights described above, the civil court proceedings can be brought before the Market Court of Finland. It is also possible to apply for precautionary measures from the Market Court. The Market Court’s decision can be appealed to the Supreme Court of Finland, provided that the Supreme Court grants leave to appeal.

b) Intellectual property office proceedings and administrative proceedings

It is also possible to enforce certain intellectual property rights in administrative proceedings at the PRH. It is possible to file an opposition, apply for the revocation and invalidation of a registered trademark, invalidation of a utility model and layout-design of an integrated circuit, and revocation of a registered trade name based on non-use. Furthermore, it is possible to request the Finnish domain name authority Traficom to remove ‘.fi’ domain names from the domain register or transfer them to the applicant in certain situations.

The decisions can be appealed to the Market Court in administrative procedure. The Market Court’s decision can be further appealed to the Supreme Administrative Court of Finland, provided that the Supreme Administrative Court grants leave to appeal.

c) Alternative dispute resolution (ADR)

Arbitration may be preferred due to its confidential nature and speedy proceedings. However, the arbitral tribunal cannot order precautionary measures, which can only be sought from the Market Court. Arbitration in intellectual property disputes is provided by the Arbitration Institute of the Finland Chamber of Commerce. The arbitral award is final and immediately enforceable.

Non-binding ADR options are also available. It is possible to request a non-binding statement in relation to Copyright Act from the Copyright Council, which operates under the Ministry of Education and Culture. Even though the statements are non-binding, they are usually adhered to because the courts could take the Copyright Council’s statement into account despite their non-binding nature.

Furthermore, it is possible to request a non-binding statement from Liiketapalautakunta (a board operating under Finland Chamber of Commerce) on whether a certain act constitutes a violation of good business practices or is otherwise unfair to other entrepreneurs. As a main rule, the proceedings are confidential, but the Board may publish summaries of its statements in such a way that the names or business secrets of the parties are not disclosed. In case the other party fails to comply with the statement, the respective other party may apply for the permit to publish the Board’s statement.

a) Civil proceedings

The infringement procedures before the Market Court usually take 10–15 months, but especially complex patent disputes may take a longer period of time. The official court fee is EUR 2,120 for companies and EUR 530 for private individuals.

The Supreme Court usually decides within 4–6 months whether leave to appeal shall be granted. In case leave to appeal is granted, the Supreme Court’s procedure lasts approximately 12 months (i.e. altogether 16–18 months in average). The official court fee is EUR 2,120 for companies and EUR 530 for private individuals.

The legal fees depend on the complexity of the case and the attorney in question.

b) Intellectual property office proceedings and administrative proceedings

The administrative proceedings at the PRH usually take 6–12 months. The official fee for applying for the revocation or invalidation of a registered trademark is EUR 400 when filed online. The official fee for applying for the revocation of a registered company name is EUR 400. The official fee for filing an invalidation claim against a utility model is EUR 70 and against a layout-design of an integrated circuit EUR 215.

If the PRH’s decision is appealed to the Market Court, the official court fee is EUR 2,120 for companies and EUR 530 for private individuals. If the Market Court’s decision is further appealed, there is also an official court fee of EUR 2,120 for companies and EUR 530 for private individuals.

The legal fees depend on the complexity of the case and the attorney in question.

c) Alternative dispute resolution

Arbitration proceedings at the Arbitration Institute of the Finland Chamber of Commerce usually take 6–10 months. The filing fee and administrative fees depend on the interest of the case. Furthermore, the arbitrator’s fee is decided separately in each case.

The Copyright Council processes statement requests in approximately a year. The statements are given free of charge.

Liiketapalautakunta provides statements quickly, as its average processing time is only a few months. The fee for statement request is EUR 2,270.

The legal fees depend on the complexity of the case and the attorney in question.

a) Civil proceedings

The competent court is the Market Court in Helsinki. The proceedings are initiated by filing a written application for a summons to the registry of the Market Court. After reviewing the application for a summons, the Market Court will issue a summons to the defendant and the defendant is invited to respond to the action in writing. The responses often include counterclaims. The Market Court has discretion to request parties to provide additional statements, when necessary. The Market Court shall prepare a written summary of the case, which the parties are invited to comment. The written stage of the proceedings is primarily followed by an oral preparatory session. The Market Court then concludes the preparatory stage of the proceedings, after which further pleadings or evidence are not allowed.

The Market Court then holds the oral main hearing, where the parties first present their opening arguments and written evidence. After that, the witnesses (including technical experts) are heard and both parties have a chance to cross-examine the witnesses. The parties then present their closing arguments, after which both parties have an opportunity to comment on the other party’s claims regarding legal fees and costs. The main hearing usually lasts from two to five days, depending on the complexity of the case.

The judgment shall be given within 30 days of the main hearing, but the judgment can be given later for special reasons. The Market Court usually gives its judgment within 2–3 months from the main hearing, depending on the complexity of the case. The remedies are further examined below in Section 31. The winning party is usually awarded legal costs, as further explained below in Section 32. The Market Court’s decision can be appealed to the Supreme Court within 60 days from the serving of the judgment, provided that the Supreme Court grants leave to appeal.

b) Precautionary measures

It is also possible to apply precautionary measures from the Market Court. The Market Court handles applications urgently, but the other party is given an opportunity to be heard. However, in case the purpose of the precautionary measure can otherwise be compromised, the Market Court may on the request of the applicant give an interim order on the precautionary measures even without reserving the other party an opportunity to be heard. In case the precautionary measures are granted, the applicant will have to bring an action on the main issue within one month before the Market Court. Enforcement of the precautionary measure also requires that the applicant lodges with the bailiff security for loss that the other party may incur as a result of the precautionary measure. A court order on precautionary measures is also subject to separate appeal, but the appeal does not preclude its enforcement unless the appellate court orders so. An interim order on precautionary measures is not subject to appeal.

c) Administrative proceedings

The competent court is the Market Court. The proceedings are initiated by filing an appeal to the registry of the Market Court. The Market Court requests a response from the possible counterparty, as well as a statement from the registration authority. The Market Court has discretion to request parties to provide additional statements, when necessary. The matter is primarily handled in written proceedings. In exceptional cases, the Market Court may hold an oral hearing. The Market Court may maintain or revoke the registration authority’s decision entirely or partially. The case may also have to be returned to the registration authority for reconsideration. Legal costs are usually not compensated, as explained below in Section 32. The Market Court’s decision can be appealed to the Supreme Administrative Court within 60 days from the serving of the judgment, provided that the Supreme Administrative Court grants leave to appeal.

Pursuant to the EU Regulation No. 608/2013, the customs authorities shall suspend the release of the goods or detain them where they identify goods suspected of infringing intellectual property right. In case the infringing party has not confirmed agreeing to the destruction of the goods within 10 working days (or three working days in case of perishable goods), the customs authority shall inform the right holder accordingly. The right holder can initiate infringement proceedings and apply precautionary measures within 10 working days (or three working days in case of perishable goods). There is also a procedure for the destruction of goods in small consignments in place.

Non-court enforcement options or dispute resolution mechanisms are not mandatory in respect of intellectual property disputes in Finland. In case the party is represented by a member of the Finnish Bar Association, the representative is obligated to reserve the other party an opportunity to settle the matter amicably before initiating court proceedings.

There is no formal process for settling intellectual property disputes, as the Act on Mediation in Civil Matters does not apply to the proceedings before the Market Court. However, the Market Court is obligated to find out whether there is a possibility of an amicable settlement during the preparation of a civil case. The parties may also try to settle the case at any stage of the court proceedings.

The plaintiff needs to prove its title to the infringed intellectual property right. Registration excerpts are usually sufficient in this regard. The plaintiff will also have to prove the existence of unregistered rights. For instance, the existence of unregistered trademark can be proved by the means of sales brochures, catalogues, price lists, invoices, annual reports, turnover and advertising figures, advertisements, customer and market surveys etc.

The plaintiff must show that an infringing act has occurred:

• Patents and SPCs: invention is exploited without the proprietor’s consent. The scope of the protection is determined by the claims, but the description may serve as guidance for interpreting the claims. The infringement of SPCs is subject to the provisions on infringement of patents.
• Utility models: invention is exploited without the proprietor’s consent.
• Trade secrets: an unlawful acquisition, use or disclosure of a trade secret has occurred.
• Trademarks: infringement can be established in three situations: 1) there exists double identity, i.e. infringing sign is identical and used for identical goods/services 2) there exists a likelihood of confusion due to identity/similarity between the respective signs and the respective goods/services 3) the earlier trademark has a reputation and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trademark.
• Trade names: there exists a likelihood of confusion due to identity/similarity between the respective trade names which are used for identical/similar business, unless it is proven that the use of the latter trade name is not disadvantageous to the holder of the earlier trade name.
• PDOs, GIs and TSGs are protected against any use of a registered name in respect of products not covered by the registration, any misuse, imitation or evocation, any other false or misleading practice, or against any other practice liable to mislead the consumer as to the true origin of the product.
• Copyright and neighbouring rights: the work/protected material is unlawfully reproduced or communicated to the public.
• Design rights: the design is used without the proprietor’s consent. The assessment is based on whether the design produces a different overall impression on the informed user.
• Rights to layout-designs of integrated circuits: an integrated circuit or any other copy of the layout-design is produced, distributed to the public or imported for distribution to the public without the proprietor’s consent.
• Rights to plant varieties: the propagating material of the variety has been exploited in professional production or marketing without the proprietor’s consent.

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?

In case there is technical expertise required in cases relating to patents, utility models and layout-designs of integrated circuits, the panel of judges will also include a Market Court engineer. In other cases, it is possible to appoint expert members to the panel of judges, who have experience in e.g. marketing or the arts. The parties may also present expert witness evidence.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

The court may order to disclose a certain document or object in case it may be relevant as evidence. The Market Court can also order that such material is seized in order to protect the evidence. Discovery is not available, but instead the parties will have to be able to identify the document they are demanding to be disclosed.

A party has the right to present any evidence it wishes, as long as facts and evidence are presented orally to the court. The parties have a chance to comment the other party’s written evidence and cross-examine the witnesses, which is often employed in practice. The plaintiff will have to prove the grounds it relies on, and the defendant will have to prove defences it relies on. The court will thoroughly and equally assess the probative value of evidence and other facts with free examination of evidence.

The defendant can firstly argue that no infringing act has occurred. Secondly, the defendant can dispute existence of the plaintiff’s prior right by filing a counterclaim stating that the plaintiff’s registered intellectual property right is invalid or should be revoked, or that the plaintiff does not have a right to the unregistered intellectual property right. Furthermore, the defendant may prove that it has a prior right to the intellectual property right in question. It can also be argued that the earlier right has been exhausted.

There are also certain defences available. For instance, in trademark and trade name matters, it is possible to claim that the earlier trademark or name has not been genuinely used during the last five years. It is also possible to defend against the trademark infringement by showing that the proprietor of the earlier trademark has not taken any measures against the use of the later mark within five years of becoming aware of it. In copyright and neighbouring rights cases, it is sometimes possible to rely on provisions restricting copyright, such as quotation right. It is also possible to defend against the patent and utility model infringement, for example, by showing that the defendant, at the time the patent or utility model application was filed, was commercially exploiting the invention in Finland in which case the defendant is allowed to continue to do so provided that the general nature of exploitation is maintained and that the exploitation does not constitute an evidence abuse in relation to the patent or utility model proprietor or its predecessor in title.

It depends on the situation and the grounds on which the intellectual property right is challenged. In some cases, anyone can challenge the intellectual property right in question, whereas in some cases only the proprietor of an earlier right can challenge the later intellectual property right. In certain cases, it is necessary to show that the plaintiff suffers harm from the intellectual property right in question.

As explained above in Sections 5 and 7, it is possible to challenge patents, trademarks, and design rights during the opposition period of the registration process. Furthermore, it is possible to oppose the registration of PDOs, GIs and TSGs, and plant varieties during the registration process. It is not possible to oppose the registration of SPCs, utility models, trade names, layout-designs of integrated circuits and domain names during the registration process.

However, any registered rights can be challenged after their registration. Unregistered rights can be challenged at any time during the subsistence of the right.

As explained above in Section 5, oppositions against patents, trademarks, and design rights can be filed to the PRH. Oppositions against the registration of PDOs, GIs, TSGs, and plant varieties can be filed to the Finnish Food Authority.

Registered rights can be challenged after their registration in civil proceedings in the Market Court. There are also several administrative proceedings available for challenging registered rights after their registration. It is possible to apply from the PRH the revocation and invalidation of a registered trademark, invalidation of a utility model and layout-design of an integrated circuit, and revocation of a registered trade name based on non-use. Furthermore, third parties may request the Finnish domain name authority Traficom to remove ‘.fi’ domain names from the domain register or transfer them to the applicant in certain situations.

Unregistered rights can only be challenged in civil proceedings in the Market Court.

The invalidity of the intellectual property rights can be based, inter alia, on the fact that they do not fulfil the requirements mentioned above in Sections 1 and 5.

In case a party has a legal interest, it is possible to seek a declaratory judgment stating that e.g. a certain product does not infringe the other party’s intellectual property right.

Remedies are usually similar for infringement of different intellectual property rights. The remedies often include injunctive reliefs, a reasonable compensation and/or damages, modifying or destroying infringing goods/materials, as well as compensation for costs relating to publication of the decision.

For more information about the costs of enforcement proceedings, please see Section 18 above.

In civil proceedings, the main rule is that the losing party shall be liable for all reasonable legal costs incurred by the necessary measures of the winning party. There are certain exceptions e.g. in case some claims are decided in favour of the losing party.

In administrative proceedings, the main rule is that each party bears its own costs. In exceptional circumstances, a party may be ordered to compensate the other party’s costs in full or in part if it would be unreasonable that the latter should bear its own costs.

The pandemic has not caused any significant changes to the protection or enforcement of intellectual property in Finland. Even before the pandemic, both the PRH and courts were moving into the electronic filing systems. Since the authorities are working remotely more than before, the authorities are favouring electronic means of communication. There have been some changes in how the PRH and the registries of the courts are physically open. The Market Court has taken safety actions during the oral hearings: some hearings have been held in temporary facilities in order to allow safe distances and the parties are recommended to wear face masks during the proceedings.