Trade Mark Litigation

Roschier, Attorneys Ltd Rainer Hilli, Mikael Segercrantz and Johanna Harsu

1. Sources of law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

In Finland, trade marks are mainly regulated by statutory law. The legislation on trade marks is laid down in the Trade Marks Act (7/1964) and Trade Marks Decree (256/1964). Provisions on collective marks are laid down in the Act on Collective Marks (795/1980). Industrial property offences are criminalised under the Penal Code (39/1889). The government Bills regarding these acts are an important legal source when interpreting the scope of application of the above acts.
Finland is a party to the Paris Convention for the Protection of Industrial Property (1883) and, as of 1995, a member state of the European Union. The EC Regulation on the Community Trade Mark (40/94) is directly applicable in Finland. The Trade Marks Act has been amended to reflect Finland’s adherence to the Madrid Protocol and on the International Registration of Trade Marks and EU legislation related to the Community Trade Marks.
Finland has also ratified the agreement establishing the World Trade Organisation (WTO) and the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) have been applicable in Finland as of 1 January 1996. Finland is also a signatory to the Nice Agreement on the International Classification of Goods and Services.
The Procedural Code (4/1734) and the Code on Criminal Proceedings (689/1997, as amended) are the procedural rules to be applied in connection with trade mark litigation. The Procedural Code contains provisions on precautionary measures. In administrative proceedings the Act on Administrative Juridical Proceedings (586/1996) is applied. The Act on Provisional Measures to Preserve Evidence in Civil Intellectual Property Cases (‘Preservation of Evidence Act’) sets forth provisions according to which a court can order a seizure of such evidence which may be relevant to future or pending IPR infringement proceedings.
Case law on trade marks is also a source of law. Lower courts are bound by the decisions of the Supreme Court (infringement and invalidation cases) and the Supreme Administrative Court (registrability issues). In addition, EC trade mark law supersedes national legislation and therefore the Finnish Courts must take into account relevant case law by the European Court of Justice (‘ECJ’) and the Court of First Instance.

1.2 What is the order of priority of relevant sources, ie which take precedence in the event of a conflict?

EC trade mark law, including the case law of the ECJ, supersedes national Finnish trade mark law. Finnish trade mark legislation must be in accordance with EC trade mark law and the principles set forth in the relevant case law of the ECJ. In the order of priority of the relevant sources, national legislation is followed by the case law of the Finnish Supreme Court and the Supreme Administrative Court. Relevant sources with lower priority are legislative materials such as government Bills and Court of Appeal decisions. As to international agreements and conventions such as the TRIPS Agreement, these are normally enacted as laws and may subsequently supersede previous legislation in accordance with the lex posteriori rule. Sometimes the enactment of an international agreement may require amendments to national legislation. However, conflicts between binding international agreements and national legislation are usually solved through interpretation.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national trade mark application/registration in your country? If so on what grounds?

Under the Trade Marks Act, any interested third party may file an opposition against the registered trade mark. An opposition must be filed with the National Board of Patents and Registration (‘NBPR’) within two months of the date on which the registration was published in the Official Gazette. Administrative action to object to the registration may be made by any party with a qualified interest, either on absolute (ie if the trade mark has been registered in violation of the Trade Marks Act) or relative grounds (eg, due to an earlier identical or confusingly similar trade mark registration).
Another possibility, which is available even after this time period, is to bring an action against the holder of the trade mark in a court of law, requesting that the trade mark registration be annulled or the trade mark forfeited.
If a trade mark has been registered in violation of the Trade Marks Act, the registration will be annulled, unless circumstances have changed since the registration. For example, the exclusive right to a trade mark is forfeited if a trade mark, after its establishment has evidently lost its distinctive power or has become misleading or contrary to law, public order or morality. Furthermore, a third party can claim revocation of the trade mark registration, without a valid reason, if the mark has not been used either by the holder of the trade mark or with their consent, eg by a licensee or a subsidiary company, for the past five years. The decision on annulment or forfeiture of a trade mark registration is to be made by a court of law on an action brought against the trade mark holder. A suit may be brought by anyone suffering damage as a result of the registration or, in certain cases, by the public prosecutor or a relevant trade organisation.
The use of a trade mark may be prohibited by a court of law, irrespective of any time limits, if the trade mark is misleading to the public, whether used by its holder or by an assignee or licensee. An action for prohibition may be brought by the public prosecutor, by anyone suffering damage due to the use of the mark, or by an interest group of relevant merchants or professionals.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

The District Court of Helsinki has the exclusive jurisdiction over most cases relating to trade marks (including Community Trade Marks) and is the competent court of first instance in matters concerning title to and forfeiture of a trade mark, invalidation of registration and prohibition of use of a trade mark, infringement of a trade mark right, and actions for declaring whether a right to a trade mark exists and whether a certain act infringes such act.
The six Courts of Appeal hear appeals over the decisions of the district courts. Most of the IP cases are handled by Helsinki Court of Appeal since the District Court of Helsinki has exclusive jurisdiction in most of the IP cases. The decisions of Courts of Appeal may be appealed to the Supreme Court, but are subject to the Supreme Court granting leave to appeal.
The District Court of Helsinki has over the years built up an expertise in IP, and all IP cases are heard by a specific department of the Court.
In an attempt to make the handling of IP cases more effective, it has been agreed upon in the recently drafted government programme that IP cases will be centralised in a specialised court of law. It has not yet been specified whether this move means reinforcing the jurisdiction of the District Court of Helsinki or establishing a new court. Other alternatives that have been mentioned in the debate on the reform of IP courts include having the Market Court hear all IP cases in the future.
One of the main aims of the planned reform is to improve the expertise and the quality of judgments. The discussion around a centralisation process is still in its early stage of planning and so it remains to be seen whether it will lead to any reforms of the current court system.
In addition to the jurisdiction of the ordinary courts, the NBPR deals with appeals from decisions relating to registration of trade marks. The decisions of the NBPR may be appealed to the Appellate Board of the NBPR, and further appeals can be made to the Supreme Administrative Court.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

As EC trade mark law supersedes national legislation, the Finnish Courts must take into account relevant case law by the European Court of Justice (‘ECJ’). As to the national courts, the lower courts are bound by the decisions of the Supreme Court and the Supreme Administrative Court. In principle, the national courts are also allowed, where appropriate, to consider the opinions of other foreign courts, but this is seldom done.
Finnish Courts in general and the Supreme Court in particular have interpreted national legislation in the light of the wording and purpose of EU Directives. Hence, Finnish courts will closely follow case law of the ECJ, when decisions regarding interpretation of the Trade Marks Directive and other relevant EU regulations will be rendered.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings?

An invalidity action must be brought in separate proceedings (ie by filing an application for summons concerning the invalidity). However, based on the joinder provisions set forth in the Procedural Code, the handling of the infringement matter and invalidation matter can be combined at the request of a party. It should also be observed however that if invalidation proceedings are commenced, the District Court, as a rule, stay the infringement proceedings (but not preliminary injunction proceedings) until the question of validity has been finally resolved.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

A party can represent itself before the court handling the trade mark litigation or appoint external counsel. As a general rule, an attorney-at-law or lawyer with a Master of Laws degree may represent parties before the national courts handling trade mark litigation matters.
There are no representative requirements before the NBPR if the trade mark holder is domiciled in Finland. If the trade mark holder or applicant is domiciled abroad, he or she must appoint a local representative. The representative does not have to be a lawyer. For practical reasons it is necessary to appoint a local representative with the requisite language skills and knowledge of the local legal system on trade marks.

2.6 What is the language of the proceedings? Is there a choice of language?

The proceedings are conducted in either of the two official languages of Finland, Finnish or Swedish. Swedish can be chosen by a Finnish national with Swedish as mother language.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

According to section 2 of the Trade Marks Act exclusive rights in a trade mark may be acquired, even without registration, after the mark has become established. A trade mark shall be considered established if it has become generally known in the appropriate business or consumer circles in Finland as a sign specific to its holder’s goods.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

Based on section 4(1) of the Trade Marks Act the exclusive rights in a trade mark mean that no one other than the trade mark holder may use in their business any sign liable to be confused with it for their goods. The question whether there is a risk of confusion is in practice decided by an overall assessment considering all relevant circumstances, such as the similarity between the trade marks and goods in question, the distinctiveness and reputation of the infringed trade mark as well as the target group. Similarities between two signs may be conceptual, phonetic or visual. Hence, it may be possible for a trade mark holder, depending on the circumstances, to also obtain protection against translations or conceptually identical but graphically different trade marks.

3.3 Are there other causes of action for trade marks (eg dilution)?

No.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

A trade mark can be enforced against basically any sign that is used in business as sign for goods. Such sign may be a domain name, a trade name, a pseudonym or other distinctive sign. The Supreme Court has in the Anheuser-Busch, Inc v Budejovicky Budvar n.p., KKO 245:143, (para 20) decision explicitly stated that a trade name also may constitute such a sign, against which protection can be granted to a trade mark, if the trade name is used as a sign for a specific good.

3.5 On what grounds can a trade mark be invalidated?

If a trade mark has been registered in breach of the provisions of the Trade Marks Act, such registration can be declared null and void by a court of law.
Furthermore, the exclusive rights in a trade mark can be invalidated:

• if it is obvious that the trade mark has lost the power to distinguish its holder’s goods from those of others that it had when it was registered or became established;
• if the mark has become misleading or contrary to law and order or morality since it was registered or became established; or
• if the trade mark has not been used for the last five years and the trade mark holder is unable to give a proper reason for the non-use.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

As stated above a trade mark registration may be invalidated if the trade mark has not been used for the last five years and the holder is unable to give a proper reason for the non use. Use of a trade mark with the trade mark holder’s consent shall be considered equivalent to use by the holder. However, invalidation of a registration may not be sought, if the trade mark has been used after the expiry of a five-year period of non-use but before the request for invalidation. In such case, any use of the trade mark that occurred during the three months preceding the request for invalidation shall not be considered if the preparations for use commenced only after the holder became aware that a request for invalidation might be filed. There is no definition of what constitutes use in the Trade Marks Act. However, it has been generally considered that the trade mark de facto must have been used in business and the question is not just of quasi-use. For example, a few newspaper advertisements or sending of a few tenders is not considered as factual use.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

In infringement proceedings the alleged infringer may, aside from the defence that there is no risk of confusion at hand, claim that a registered trade mark is null and void, eg based on prior right to the trade mark, or that the trade mark on some ground may be invalidated. In such situation the court shall, as a rule, allow the alleged infringer a period within which to bring action in a separate court hearing in order to have the registration declared null and void or invalidated. The Court shall stay the infringement proceedings until the matter of the validity of the registration has been finally settled. If the secondary action is not brought within the period prescribed, the Court shall rule on the case without regard to the invalidity claim.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

It is possible that enforcement of a trade mark under some circumstances may expose the trade mark holder to liability for an antitrust violation. However, antitrust claims are not widely used as a defence in Finland by alleged infringers.

3.9 Can a court only partially invalidate a trade mark?

If the ground for invalidation of a registration concerns only some of the goods for which the trade mark has been registered, the registration can be invalidated only in respect of those goods.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

It is not possible to amend a registered trade mark during a lawsuit. However, according to section 24(3) of the Trade Marks Act, the proprietor of the trade mark may anytime apply for the limitation of the list of goods or of classes of goods for which the mark has been registered. The application must be filed with the NBPR.
A trade mark shall be used in the form as it is registered. However, minor changes that do not alter the overall impression of the trade mark may be entered in the Trade Mark Register based on an application by the holder of a registered trade mark. In case the amendment is more than just minor, a new application for registration must be filed.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

A defence which is available to an alleged infringer under the Trade Marks Act is that the trade mark holder has lost their prohibition rights based on the preclusion or passivity rule.
The preclusion defence is available in a situation where there is a risk of confusion between a registered trade mark that has been used in Finland for a period of five consecutive years and a trade mark which has been registered or established earlier. In such situation the use of the later trade mark may not be prohibited provided that the application for registration was made in good faith and the holder of the earlier trade mark was aware of the use of the later trade mark for the said period.
The passivity defence is available in a situation where there is a risk of confusion between an established trade mark and another trade mark registered or established earlier. In such situation the holder of the earlier trade mark shall no longer be entitled to prohibit the use of the later trade mark in case he or she has not acted within a reasonable period of time to prevent the use of the later trade mark.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

It is possible for a trade mark holder to bring a lawsuit claiming both trade mark infringement and unfair competition, eg in a situation where the trade mark constitutes the shape of a product or a product package. However, two separate proceedings would have to be initiated as trade mark infringement cases are handled by the District Court of Helsinki and unfair competition cases by the Market Court. It is possible to bring parallel proceedings, even if the trade mark is not registered, eg in a situation where the trade mark constituting of the shape of a product or product package has been established through use.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

The trade mark holder can sue for trade mark infringement in Finland. Furthermore an exclusive licensee may also act as a plaintiff in actions concerning the infringement of trade mark rights. A prerequisite for such right is however that an entry regarding the licence has been made in the Trade Mark Register. If the exclusive licensee wants to bring an infringement action, he shall inform the trade mark holder accordingly; if he fails to do so, his suit shall not be heard.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

An alleged infringer may initiate a declaratory action to determine whether or not a right to a trade mark exists, or whether or not a particular act infringes that right, where there is uncertainty that is detrimental to the alleged infringer.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Anyone who uses a sign that is identical or confusingly similar to a registered or established trade mark, in business for their goods may be sued for trade mark infringement. Such party may be eg a manufacturer, importer, wholesaler, distributor or retailer of infringing goods. In practice proceedings may also be initiated against the freight forwarder in transit cases where the seller and purchaser are unknown. This principle was established by the Supreme Court (Adidas Salomon AG v Scanrapid Oy and Raycom Shipping Ab, KKO 2002:119) in a case where the court held that in transit situations a local freight forwarder may only be summoned if the owner of the infringing goods (that is the actual infringer) has not been identified. These proceedings wherein the freight forwarder has been summoned may result in the destruction of the goods, but the freight forwarder will not be liable to compensate for the right-holder’s legal or other costs in the matter.
The directors of the infringing company may not be sued personally for trade mark infringement. However, a deliberate trade mark infringement is a criminal offence. In serious infringement cases the directors of a company may face a fine or even imprisonment. Criminal actions are initiated by the public prosecutor.
It is not possible under Finnish law to sue someone for inducing or contributing to trade mark infringement by someone else.

4.4 Is it possible to add or subtract parties during litigation?

Based on the joinder of actions rules in Finland’s Procedural Code, actions brought by a plaintiff against several defendants or by several plaintiffs against one or several defendants shall be heard in the same proceedings, if they are based on essentially the same grounds. Hence it is possible for the trade mark holder to sue eg the importer and retailer of infringement goods simultaneously to the infringement proceedings.
In case only one party eg the retailer has been sued in the infringement proceedings and the plaintiff wants to add another party to the litigation, eg the importer, at a later stage, such party has to be summoned separately. In such situations the cases may be combined, ie heard in the same proceedings, if this furthers the clarification of the cases.
If several parties have been sued in the infringement proceedings it is possible to subtract one party from the litigation eg by withdrawing the lawsuit against such party. However, it should be noted that if the plaintiff withdraws the action against one party after such party has responded to it, the case shall nevertheless be decided by the Court, if the defendant so requests. Furthermore, if the proceedings are discontinued because the plaintiff has withdrawn the action against one party, the plaintiff shall, as a rule, be rendered liable for the costs of such party.

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

Sending an infringer a ‘cease and desist’ letter is often the first legal step. If the negotiations do not lead to the desired result, the trade mark holder may choose to commence infringement proceedings on the merits, either civil or criminal. In urgent matters, preliminary injunctions – also ex parte – are available. Furthermore, if there is not enough evidence on the alleged infringement or the scope for it, the trade mark holders sometimes rely on the Act on Provisional Measures to Preserve Evidence in Civil Intellectual Property Cases (‘Preservation of Evidence Act’) which sets forth provisions according to which a court can order a seizure of such evidence which can be deemed relevant to future or pending IPR infringement proceedings.

5.2 Are criminal proceedings available? If so, what are the sanctions?

Certain serious trade mark infringements are criminalised in Finland and the infringer might in such cases face a fine or even imprisonment. Industrial property offences are criminalised in chapter 49, section 2 of Finland’s Penal Code (39/1889). According to this provision an act is to be deemed an industrial property offence if it is in breach of the Trade Marks Act and if the act is also likely to cause significant financial damage to the right holder. Indictment for an industrial property right offence may only be brought by the Public Prosecutor at the request of the injured party.
Illegally manufactured goods and devices intended to be used for production may also be confiscated and destroyed. IP right holders usually rely on public bodies such as customs or the police to bring criminal proceedings. In such cases the IP holder will need to provide assistance in order to prove the case against the infringer.

5.3 Are border measures available?

Community-wide regulation on anti-counterfeiting measures at the borders exists as supranational legislation in Finland. The relevant Regulation currently in force is Council
Regulation 1383/2003/EC1. According to the Regulation the Finnish Customs may, based on the right-holders’ application, seize a shipment of counterfeit products entering the territory of Finland. The application for border control may either be national or EU wide, but basically the same set of rules is applied in both cases.
The Regulation allows trade mark holders to receive assistance from the customs authorities to stop distribution of counterfeit products prior to their introduction to the Finnish market. The regulation provides an effective legal framework for trade mark owners to react against the import and transit of infringing goods. The ECJ has in the Montex case (C-281/05) somewhat limited the right holders’ possibilities to react against the transit of counterfeit goods under Council Regulation 1383/2003/EC. Section 4 of Finland’s Trade Mark Act is however subject to an amendment (21.1.2000/56) explicitly prohibiting the transit of counterfeit goods via Finland.

5.4 To what extent are courts willing to grant cross-border or extra territorial injunctions?

There is no case law on extra territorial injunctions except for the possibilities to react against transit of counterfeit goods.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

There is no relevant case law on ‘torpedo’ actions by Finnish courts.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute and arbitral award declaring a trade mark invalid?

Alternative dispute resolution methods are available to resolve trade mark infringement disputes, but ADR methods seem to be rarely used in Finland. The invalidity of a trade mark cannot be decided upon in arbitration or other alternative dispute resolution methods.

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

Ordinary infringement proceedings start by filing an application for summons with the District Court of Helsinki. The application for summons should be individualised in such a manner that it includes individualisation of claims, an estimate of the amount of compensation claimed and relevant evidence. The District Court takes care of the service of the summons to the defendant and grants a certain period of time (30 to 60 days) for a written response. There may be a further exchange of briefs whereafter the District Court calls the parties for a preparatory oral hearing. At the preparatory oral hearing the parties shall present their claims, short grounds for their claims and inform what evidence, witnesses and/or experts they will rely upon in the proceedings. At the preparatory oral hearing the date(s) for the main oral hearing is set. At the main oral hearing the parties will present their claims, argue their case and hear the witnesses.

6.2 Are disputed issues decided by a judge or a jury?

Disputes are decided by judges In the District Court and cases are heard by one judge or, if one of the parties so request, by three judges. Many IP cases are in practice heard by three judges. Disputes are decided by judges.

6.3 To what extent are documents, affidavits, witnesses and/or (court appointed or private) experts used? Is it possible to cross-examine witnesses?

Finnish courts observe a general principle of evaluation of evidence. Basically, it is the claimant who shall provide the evidence on infringement in infringement proceedings and on invalidity in invalidity proceedings. It is possible to cross-examine witnesses.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

In trade mark infringement cases, the right holder may claim compensation for damages. Damages may also be claimed in connection with criminal proceedings (see question 7.3 below).
Anyone infringing a protected trade mark right may be enjoined by a court of law from continuing or repeating the act of infringement. An injunction against present and future infringements can be requested either in civil or criminal proceedings.
Infringing property, irrespective of whether the infringement was deliberate, can be seized on the decision of the public prosecutor of the court if the injured party so demands and, when necessary, sufficient security for the possible damage and for the costs of the confiscation can be attached.
In such case, the general provisions on seizure in criminal matters will be correspondingly applied. Furthermore, in a trade mark infringement case, the court, if deemed reasonable, may order that the trade mark which has been illegally affixed onto goods, packaging, brochures, business documents, or the like, may be removed or altered in such a way that it no longer can be misused. If such a measure cannot otherwise be undertaken, the court may order destruction of the infringing property. It is also possible to demand the destruction of infringing moulds and matrices, where appropriate.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

The injunction is only effective against the defendant(s) in the court proceedings. If another party such as the infringer’s supplier or customer would infringe, separate action can be taken against them.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits or some other basis)? Are punitive damages available? If so, under what conditions?

According to the Finnish intellectual property legislation the principle of full compensation is the basis for setting damages when the infringement is intentional or negligent. According to the Trade Marks Act, the aggrieved party is entitled to compensation for damage from the defendant for all the damage he or she has suffered if the infringing act has been deliberate or negligent. Even if the defendant is not found guilty of negligence, the court may, where deemed reasonable in view of their financial and other circumstances, order that the aggrieved party provide compensation for the profits gained by such infringement during a period not exceeding the three preceding years. If the negligence has been insignificant the court may adjust the compensation awarded at its discretion.
One practical problem in setting damages in trade mark infringement cases is, however, how to establish the amount of damages incurred. Here, the IP rightholder has the burden of proof. As a consequence, the courts have in practice often, due to lack of complete evidence, awarded compensation as an arbitrary lump sum. The courts often exercise their power under chapter 17(m), section 6 of the Procedural Code to estimate the amount of reasonable damages. As a rule they make their estimates cautiously, and in fact under-compensate rather than overcompensate. The unfair profits made by the infringer, if those exceed the damages of the rightholder, could in Finland be claimed under the basic principle of unjust enrichment.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

In Finland, interlocutory injunctions can be granted in trade mark cases by virtue of the provisions regarding general precautionary measures in chapter 7, section 3 of the Procedural Code or on section 48 of the Trade Marks Act. According to the Procedural Code, a preliminary injunction can be granted before the main infringement proceedings have begun. This again is not possible under section 48 of the Trade Marks Act. Chapter 7, section 3 of the Procedural Code provides for three requirements that have to be fulfilled before a preliminary injunction can be granted: (i) the requirement for claim; (ii) the requirement for danger; and (iii) the requirement of balance of convenience, ie the court shall balance the interests of the parties in such a way that no undue inconvenience is caused to the defendant in comparison to the interest to be secured. Requirement for claim, ie the likelihood of infringement, means that the trade mark holder shall establish that he or she has a registered patent right and that it is likely that the adverse party is infringing said trade mark. Before the issuance of the injunction order the applicant may be required to place sufficient security for any damage that the interim injunction may cause to the adverse party.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

An ex parte injunction may be applied and granted, but the courts tend to give the adverse party the right to be heard in interim injunction proceedings if the infringement question is more complex. An ex parte injunction can be granted on a temporary basis without hearing the adverse party in situations where the purpose of the injunction may otherwise be compromised.

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

A ‘saisie contrefaçon’ type of procedure to collect evidence of infringement by way of seizure, like the one provided for, eg under French law, is not as such available under Finnish law. However, the Preservation of Evidence Act sets forth provisions according to which a court can order a seizure of such evidence which can be deemed relevant to future or pending IPR infringement proceedings. The court can also order other precautionary measures, which are necessary for the obtaining and preservation of evidence. The Preservation of Evidence Act is applicable in civil proceedings concerning industrial property rights (eg trade marks) and copyrights.
According to section 3 of the Preservation of Evidence Act, a precautionary measure can be ordered if the applicant establishes that he has an IP right (eg a registered trade mark) and that it is likely that his or her right is being infringed or that an infringement is about to take place. A further requirement is that there is a risk that the defendant or a third party in possession of the evidence conceals, destroys or conveys the evidence or otherwise acts in such a way that preservation of the evidence is endangered.
When assessing such an application, the court shall balance the interests of the parties in such a way that no undue inconvenience is caused to the defendant in comparison to the interest to be secured. Further, the court shall also take into account the protection of the trade secrets of the defendant.
Section 4 of the Preservation of Evidence Act further provides the possibility of granting an order for the presentation of evidence ex parte without the counterparty being heard if the aim of the measure would otherwise be endangered. According to the preparatory works, the nature of evidence in IPR infringement matters is such that it is often easily destroyed and, consequently, the precautionary measure shall in practice normally be granted ex parte if the applicant so requests. The applicant shall, however, convince the court that there is a factual risk that the evidence will be destroyed. Once an interim precautionary measure has been granted it will be in force until ruled otherwise by the court.
The enforcement of the precautionary measure, ie the seizure of evidence, is carried out by the bailiff. If necessary, the bailiff may be accompanied by an independent expert in the field, who would be competent to assess the evidence concerned. Hence it is the bailiff (not the applicant) who will examine the evidence at the premises of the defendant or a third party and the seized evidence will be in the possession of the bailiff and the applicant will get access to the evidence material only as ruled separately by the court.
The length of the proceedings depends on whether the court approves the application for precautionary measure, with an interim decision ex parte or if the defendant is reserved a right to be heard. If the court will approve the application for seizure precautionary measure ex parte, the interim decision will be obtained in approximately three to seven days. If the court would consider that the defendant must be heard before any decision in this matter is rendered, it is likely that the court’s decision would be reached in three to four weeks.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

The defendant may argue that the trade mark is not valid, but for the court to examine this claim in more detail, the defendant would have to initiate separate invalidation proceedings. The preliminary injunction proceedings are not stayed even if the defendant commences an invalidation action.

8.5 What is the format of preliminary injunction proceedings?

Preliminary injunction proceedings are, as a rule, summary written proceedings.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

Affidavits, survey evidence and private expert opinions are frequently used in preliminary injunction proceedings as there, as a rule, is no oral hearing.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

The applicant shall in preliminary injunction proceedings establish that he or she has a registered or established trade mark right and that it is likely that the adverse party is infringing said right. The applicant shall present as much evidence as possible of the infringement to convince the court that the infringement is more probable than not.

8.8 How long do preliminary injunction proceedings typically last?

The interim injunction proceedings generally take about three to six months before the District Court rules on the matter. An ex parte injunction may be granted even faster (in a couple of days). The ruling of the District Court can be appealed to the Court of Appeals and further leave for appeal can be sought to the Supreme Court. The appeal to the Court of Appeals may require from 12 to 18 months to be dealt with.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

Pursuant to chapter 7, section 6 of the Procedural Code, the applicant of the preliminary injunction, has to initiate main (infringement) proceedings against the infringer within one month from the ruling in order to keep the preliminary injunction in force.
The preliminary injunction is not as such immediately enforceable. To enforce the injunction, the applicant has to arrange security for the execution authority (District Bailiff) in the amount requested by the Bailiff, and thereafter have the Bailiff serve the injunction documentation to the counterparty.

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

Decisions of the District Court of Helsinki can be appealed to the Helsinki Court of Appeals. The proceedings before the Court of Appeals are in writing, but if a party so requests a full review with oral main hearing is generally conducted. The rulings of the Court of Appeals can, subject to leave, be appealed to the Supreme Court. Leave is granted if the matter is of a precedential nature. The Supreme Court thus decides about issues of law.

9.2 How long do appeal proceedings typically last?

The appeals procedure generally takes one and a half to two years. Preliminary injunction appeals are handled more rapidly (six to 12 months). The term for filing an appeal to the Court of Appeals is 30 days after the date of the ruling. The counter-party can file a cross appeal subsequent to that. The term for filing the application for leave and the appeal is 60 days from the date of the ruling of the Court of Appeals.

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

The costs vary a lot from case to case. For a first instance decision costs may be between €20,000 and €100,000, preliminary injunction proceedings between €20,000 and €50,000 and appeal proceedings may vary between €20,000 and €100,000.

10.2 Are costs recoverable from the losing party?

In Finland the main rule is that the losing party should compensate the winning party’s litigation costs. The Courts, however, have the right to adjust the compensation for litigation costs.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

The Finnish National Board of Patents and Registration has as from 15 August 2007 started registration of well-known trade marks in Finland.
There are no significant trends currently developing or emerging in Finnish trade mark law. According to the statistics obtained from the Finnish National Board of Patents and Registration, the annual number of applications filed has continued to decrease since the peak in 2000-2001, and is currently approximately 7000 applicants per year. This number includes both national and international applications. According to the Board, the Community Trade Mark has become more and more popular.
According to statistical information obtained from Statistics Finland, the amount of trade mark related litigation has decreased from a total number of 84 cases handled in 2000 to 25 cases in 2006. The Finnish courts have an increasing tendency to refer directly to EC law in their decisions in trade mark related cases. There have also been two recent trade mark related cases where the Court has referred the case to the ECJ for a preliminary ruling, eg in cases Anheuser Busch Inc. v. Budejovický Budvar, nádrodni podnik (Supreme Court Case KKO 2005: 143, ECJ C-245/02) and The Gillette Company and Gillette Group Finland Oy v. LA Laboratories Ltd Oy (Supreme Court case KKO 2006: 17, ECJ case C-228/03).

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

There are no forthcoming amendments to the Finnish trade mark law to the extent it relates to trade mark enforcement. However, Finland is going to accede to the Trade Mark Law Treaty of 1994, which is going to cause some amendments to the current legislation. These amendments relate only to trade mark registration procedures.

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

The website of the National Board of Patents and Registration which is the trade mark registration authority in Finland provides access to a database on all trade marks registered in Finland. The website also contains useful information on registration of trade marks and on trade mark law in general: http://www.prh.fi.
The website of IPR University Center contains the latest news on IPR issues, including Finnish and international case law. The IPR University Center is an institute established jointly by five Finnish universities which coordinates and promotes education of and research into issues of intellectual and industrial property rights: http://www.iprinfo.com.
More information about the judicial system of Finland is provided in the combined pages of Finnish Courts: http://www.oikeus.fi/8108.htm.