When can a trademark be revoked or invalidated?

When a trademark is revoked or invalidated, it is removed from the register and the trademark right is terminated either entirely or in part. The trademark is deemed not to have been valid, as from the outset, to the extent that the trademark has been invalidated.

Below, you will find a list of situations that can lead to the revocation or invalidation of a trademark.

Revocation

The revocation of a trademark applies to situations where the trademark has lost its ability to function as a trademark after being registered. The trademark can be revoked either entirely or in part.

If the trademark is revoked, the effects of revocation are applied starting from the date when the revocation application was submitted. An earlier date on which one of the grounds for revocation occurred may be fixed in the revocation decision, at the request of the claimant or the applicant.

 A trademark can be revoked for the following reasons: 

  • Non-use

A trademark can be revoked if the trademark owner has not taken the trademark into use within five years of the registration, or if such use has been suspended for five successive years. In other words, a trademark can be revoked if the trademark owner has not put their mark to genuine use in the past five years in connection with the goods or services it was registered for.

The date from which the five-year period is calculated is recorded in the Finnish Trademark Register. The period of five years is calculated from the date on which opposition against the trademark can no longer be filed or from the date on which the decision on the opposition procedure became final.

The trademark can be revoked either entirely or in part. The trademark can be revoked only in part if the owner has used the mark for some of the goods or services covered by the registration.

For example: The trademark Äxä was registered 13 years ago for clothing and cosmetics, but during the last five years it has only been used as a trademark for clothing. Due to non-use, the trademark can be revoked for cosmetics in class 3.

If the trademark owner can provide proper reasons for the non-use of the trademark, the trademark cannot be revoked. Katso tarkemmin erillisestä ohjeesta. (docx, 0,18 Mt) Ei lisätä englanniksi.

  • Dilution, in other words loss of distinctiveness

A trademark can be revoked if it has lost its distinctive character, in other words if the word has turned into a commonly used name for the goods or services in question. The risk of dilution is particularly high when the registered trademark is a word for a completely new product type for which there is yet no established word in standard language.

For example, the Finnish word “mono" (ski boot) was originally the name of a specific manufacturer’s ski boots – in other words, a trademark. Gradually, customers and other ski boot manufacturers started using the word “mono" as a common noun for all kinds of ski boots made by different manufacturers. In the end, “mono" became the common name for all ski boots.

  • Misleading indication

A trademark can be revoked if it has become misleading to the public as a result of how it is used by the trademark owner or with the owner’s consent. A trademark can become misleading, for instance, in terms of the geographic origin of the product or service.

For example: a trademark includes the word beef, but it is genuinely used only for pork products. The trademark could be misleading in terms of the content of the product.

Invalidation

Invalidation applies to situations where there has been an obstacle to the trademark registration, as referred to in the Finnish Trademarks Act, already at the time of registration. Such obstacles include, for example, the lack of distinctiveness, earlier registered trademarks and company names, and established trademarks.

For example, invalidation can apply to situations where, at the time of registration, there has been no knowledge of an earlier, established trademark that causes a risk of confusion.

Declaring a trademark invalid means it is recorded in the register as invalid starting from the date of registration. The trademark can be declared invalid either entirely or in part.

Genuine use of an earlier trademark? 

If invalidation is claimed based on an earlier registered trademark, the owner of the earlier registered trademark must, at the request of the owner of the later registered trademark, prove that the earlier trademark has been put to genuine use.

The owner of the later trademark must invoke the non-use of the earlier registered trademark already in their first statement on the application. Non-use cannot be invoked at a later stage.


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Latest update 17.06.2021