Insights

12/11/2012

Intellectual property gets a new home

With a law enacted on 17 December 2012, the Finnish parliament moved forward on the longstanding plan to house intellectual property rights disputes in the Market Court. This legislative reform has a significant impact for all companies operating in Finland. The Market Court will start to hear these disputes in the autumn of 2013.

Currently, if you think someone has infringed your intellectual property rights or has engaged in unfair business practices, you have to bring the dispute to different courts – even if the claims roughly deal with the same facts. This reform makes it possible for a plaintiff to combine these claims. 

As a result, the reform will mostly eliminate the need for simultaneous or consecutive litigation in different courts – saving litigants time and money. There is also the thinking that having a specialised intellectual property rights court will help to improve the quality and uniformity of rulings in these matters. 

At present, when the National Board of Patents and Registration (NBPR) takes a decision concerning patents, utility models, trade marks, designs, trade names or topographies of integrated circuits, you need to appeal to the NBPR Board of Appeal. If you want to enforce any of these rights, the Helsinki District Court is the venue of first instance. If you want to get a prohibition against unfair business practices, you can take the case to the Market Court. Claims for damages resulting from those practices, as well as matters related to copyright and neighbouring rights, fall under the jurisdiction of the general courts, which may mean any district court in Finland.

After the reform, the Market Court’s jurisdiction will cover all civil and petitionary intellectual property rights matters, excluding only purely contractual disputes where a plaintiff does not claim that its intellectual property rights were infringed. The Finnish judiciary will also transfer petitions for injunctions based on intellectual property rights infringement from the district courts to the Market Court. Additionally, the Market Court will decide civil matters – such as claims for damages – related to intellectual property rights or unfair business practices.

The Market Court will also become the appeal body for all intellectual-property-rights-related decisions that the NBPR has taken. These include appeals against both refusals of registrations and decisions regarding oppositions of registrations. As a result, the NBPR Board of Appeal, stripped of all of its functions, can be abolished. The Market Court will also hear appeals against decisions the Finnish Communications Regulatory Authority has taken under the Domain Name Act. 

The general courts will continue to hear criminal cases related to intellectual property rights. However, the issued amendment of law will centralise these matters in the Helsinki District Court, as the first instance.

After the reform, you will be able to appeal against the Market Court’s rulings either to the Supreme Court or the Supreme Administrative Court, depending on the nature of the matter. The Supreme Administrative Court will hear appeals against rulings in matters originating from the NBPR, and the Supreme Court will hear all other matters as a court of last instance. In all cases, you will need leave to appeal. 

The legislature intends that the reform take effect on 1 September 2013. As a transitional arrangement, however, trade mark appeals brought before the NBPR Board of Appeal on or after 1 January 2013, as well as appeals related to patents, utility models, topographies and designs brought on or after 1 May 2013 and pending before the Board of Appeal when the reform takes effect, will be transferred to the Market Court. This change will not affect actions pending before general courts.

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