Trademark terminology

Application date

The day on which the trademark application for the first time includes 1) the applicant’s identification details, 2) a clear and precise list of goods and services, and 3) a clear and precise presentation of the trademark. A trademark enjoys protection from the application date onwards.

Class

All goods and services are divided into 45 classes by subject. A class is identified by a number, and it includes terms.

Class heading

The heading of a specific class of goods and services intended to indicate what kind of goods and services the class includes.

Classification

A trademark’s list of goods and services divided into 45 classes according to the Nice Agreement.

Dismissal

A trademark application is dismissed – in other words, processing ends – if the applicant does not reply to an office action or a formal office action by the deadline. After a decision of dismissal, the processing can only continue if the applicant requests the processing to be continued, pays the reinstatement fee and replies to the office action on the date mentioned by the decision of dismissal. Decisions of dismissal can be appealed at the Finnish Market Court.

A trademark application can be dismissed in full or in part. If an application is dismissed in part, the parts where no obstacles to registration have been found will still be processed.

Distinctiveness

The trademark’s ability to distinguish the goods and services of one trader from any similar goods and services of other traders.

Earlier mark

An earlier registered trademark detected in the trademark examination process, giving rise to the risk of confusion with the intended trademark in an application. If there is a risk of a trademark being confused with an earlier mark, it will be an obstacle to registration.

Establishment

To become distinctive and reach trademark protection through use. A trademark can be established if it is widely known in Finland in the business and consumer circles in which the goods and services are provided.

EUIPO

The European Union Intellectual Property Office, which processes matters concerning EU trademarks. The EUIPO operates as a joint body for national trademark authorities in EU member states.

EU trademark

A trademark of the European Union valid inside the EU.

Expiration

The expiration of a trademark’s period of validity.

Filing date

The day on which the application arrives at the authority’s office.

Formal office action

An office action which we send if we detect a deficiency in the trademark application. A formal office action does not concern the registrability of the actual trademark, which is not examined until after the formal deficiencies have been corrected.

Office action

An action which we send to the applicant if we detect a deficiency or an obstacle to registration in the trademark application. An office action is not final and the applicant can reply to it. See: How to reply to an office action. Examples of obstacles to registration are when a mark has no distinctive character or there is a risk of confusion.

Opposition

A claim by an outside party stating that the mark should not have been registered. An opposition can be filed within two months of the publication of the registration. Filing an opposition initiates an opposition procedure at the Finnish Patent and Registration Office, which determines whether the registration will remain valid. An opposition can concern a mark in its entirety or only some of the goods and services it covers.

Opposition period

A period of two months during which an outside party can file an opposition against a trademark. See: Opposition.

Preliminary examination

An examination, subject to a fee, where the PRH can examine the trademark’s distinctiveness and any obstacles to registration before registration.

Priority date

The date from which a trademark can provide protection. Usually, the priority date is the same as the application date. If the trademark has been applied for earlier at another authority, the trademark can, under certain conditions, enjoy priority from that date forward compared to other trademarks that have been applied for later.

Prohibition right

The trademark owner’s right to prohibit others from using the same or a similar mark for goods or services that are similar to the owner's goods or services.

Proof of use

A presentation of evidence intended to indicate that a trademark has become distinctive through use. The proof of use can be almost any use of the mark, such as market analysis, statements, marketing material, or distribution details.

Publication

Announcing and publishing decisions and registrations concerning trademarks in the Trademarks Gazette.

Registration

Entering the trademark in the Trademark Register.

Renewal

The renewal of a trademark’s validity. A trademark is valid for 10 years at a time, and it has to be renewed in order to remain valid. A trademark may not be renewed earlier than one year before or later than six months after it is expired.

Representative

A person who represents the trademark applicant or owner in matters concerning the trademark.

Risk of confusion

If a trademark and the goods and services covered by the trademark are similar to someone else’s exclusive right in the eyes of the target group or an average consumer, there is a risk of confusion between the marks.

Term

An item or service in one class. For example, the class could be 15 and the term “violins". The number of terms in one application is not limited.

Trademark Gazette

An online publication that includes all registrations and changes concerning registrations in a specific period of time. Published on the 15th day and the last day of every month.

Specification

Providing further information on a list of goods and services related to a trademark applied for before 1 January 2014, if the list of goods and services included the entire class heading.

WIPO

The World Intellectual Property Organization. The WIPO processes international trademark applications based on the Madrid Protocol.


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Latest update 17.06.2021