How should I respond to an office action?

The easiest way to respond to an office action is to use our online service. The service is available in Finnish and in Swedish.

Go to the online service.

Submit your response in writing by the deadline. We will not accept any responses that are submitted late.

In your response, include all facts that you think are necessary for the decision. You can also disagree with an obstacle, in other words challenge it. Always give your reasons in your response.

Give your response in an informal letter. Clearly state your measures and arguments in your response.

The following examples explain how you can overcome the obstacles reported in the office action.

Show that your trademark is distinctive

If your trademark is considered to lack distinctive character, get evidence of the use of your mark and of its being well known in your line of business. This proof of use evidence helps you to show that your trademark has acquired distinctive character through use as a special symbol of your products and services.

It is important that your evidence dates from the time before filing the application. The evidence can consist of, for instance, newspaper articles, advertisements or brochures. In those cases, you must also give a report on their circulation. The best proof of use evidence is provided by market surveys which clearly show that your target group considers your mark as a trademark.

Please observe that the material you send us must not contain links. The information behind the links may change, which means we cannot use it as a basis for the processing.

Make sure your evidence is extensive enough and shows how, when and for which goods or services the proposed mark has been used.

Reduce your list of goods and services

If an earlier trademark or company name prevents the registration of your mark, you can reduce your list of goods and services by leaving out all goods or services that are similar to those covered by the earlier registration. If your application no longer concerns goods and services identical or similar to those covered by the earlier mark or company name, the obstacle is usually removed.

If your trademark is considered to lack distinctive character only in respect to certain goods or services in your application, you can leave them out. Then we can register the mark for those goods or services for which it has distinctive character.

When you reduce the list of goods and services, indicate clearly the goods and services you want to leave out of the application. You can also submit a new list of goods and services showing how it is reduced.

Get consent to registration

If an earlier trademark or company name or a surname prevents the registration of your mark, you can usually overcome the obstacle by getting the owners’ consent to the registration. Submit the consent to us in writing.

Revoke earlier registrations

It is possible to revoke earlier registrations but the method varies depending on the case. The cases are processed either by the PRH in an administrative procedure or by the Finnish Market Court.

Find out whether the earlier trademark has been used during the last five years. If not, and if the owner of the mark cannot give a proper explanation, the registration can be revoked either by the Finnish Market Court or through an administrative procedure at the PRH. A trademark can also be revoked if it has become a generic word after registration. This is called degeneration.

A trademark can be declared invalid if an earlier trademark should not have been registered from the outset. Invalidations are also processed either by the PRH in an administrative procedure or by the Finnish Market Court.

Read more about the procedure for revocation or invalidation of trademarks at the PRH.

A company name can be revoked through a new administrative procedure at the PRH. A company name can be revoked in whole or in part if the name has not been used in a particular line of business for the last five years.

The company name forming an obstacle can also be revoked by the Finnish Market Court.

Read more about revocation of a company name at the PRH.

Changes to a proposed mark in the office action phase

Please note that you cannot make changes to your proposed trademark in the office action phase to overcome an obstacle. We can only accept minor changes which do not alter the general impression of the mark. If you want to modify the mark to such an extent that you can overcome an obstacle, the changes are not minor. However, you can always file a new application for your altered trademark.

Submit your response in writing

Submit your response to the office action in writing, using our online service available in Finnish and in Swedish. In terms of delivery reliability and data security, it is safer to submit documents via the online service than by email. You will get a receipt of submission immediately after submitting a document. The document is transferred from the service directly to those who process the matter, which makes the processing at the PRH faster than before.

Alternatively, you can submit your office action response by email to tmposti@prh.fi. The total size of your email attachments must not be more than 15 MB.

If you are sending a large number of attachments, send the material to us for example on a memory stick. Please note that you are responsible for making sure that the original files can be opened or converted into a format we can open.

Recommended file formats

We recommend that you use the following file formats:

  • Documents: PDF (preferably PDF/A)
  • Images: JPEG
  • Video files: MP4
  • Audio files: MP3

If you use some other file format, you are responsible for making sure that the original files can be converted into a format we can open.

The maximum size of a single file is 15 MB.

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Latest update 17.06.2021