A trademark of intellectual property rights under the Trade Mark Act for a product can be obtained in two ways: by registration or by establishment. In addition to extensive use, establishment requires general recognition, and furthermore, confirmation of the establishment of a trademark always requires a court decision. Therefore, we strongly recommend always registering the trademark for your product.
Studies have shown that protecting IPR – such as trademarks – offers even greater financial benefits for small and medium-sized enterprises (SMEs) than for large corporations. In Finland, however, SMEs have often failed to leverage this benefit.
Difference between a trademark and a sole trader
Although the protection offered by a trade name and a trademark may partially overlap in some situations, a trademark typically provides stronger protection than a trade name. Furthermore, a trademark can be assigned or licensed, which is generally not possible for a trade name.
A business name identifies a company, but it does not grant exclusive rights to the trade name of the services provided or products sold by the company. The risk is that a competitor may register a trademark, leaving expensive and uncertain litigation as the only option, concerning whether the trademark has become established through use.
Trademark registration
Applications for a trademark intended for domestic use are filed with the Finnish Patent and Registration Office, whereas for an EU-wide trademark, applications are filed with the European Union Intellectual Property Office. Whichever scope of protection you intend to obtain with a trademark, it is worth putting careful thought into the application.
First, you need to consider the distinctiveness of the trademark you wish to protect. For instance, a mark that merely describes the quality, quantity, purpose, time of manufacture or performance, or some other characteristic of the goods or services cannot be considered sufficiently distinctive. Official fees are not refundable if the applied-for trademark is not sufficiently distinctive.
Another important decision when making a trademark application relates to the type of mark. Most commonly, a trademark is applied for in word form, which provides protection regardless of the representation of the word. A device mark, on the other hand, typically protects a logo. It can also be applied for, for example, when a word forming part of a graphic mark is inherently indistinctive.
In addition, particular attention should be paid to preparing a sufficiently comprehensive list of goods and services. Before submitting an application, it is advisable to familiarise yourself with the classifications for different goods and services. It is also a good idea to consider in advance, for example, potential future changes in business operations, protection of the product for retail services (e.g. sales via your own online shop), and associated services for the goods or services.
Article written by lawyer Santeri Valkamo. You can always call him free of charge, p. 010 299 5090.