Registered Designs Act No. 221 of March 12, 1971 * (as last amended by Act No. 718 of April 21, 1995)
TABLE OF CONTENTS** | |||
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Articles | |||
Chapter I: | General Provisions ........................................................ | 1 -8 | |
Chapter II: | The Application for Registration | and Processing | |
Thereof.......................................................................... | 9 -23 | ||
Chapter III: | Period of Validity of a Design Registration .................. | 24 - 25 | |
Chapter IV: | Assignment, Licensing, Compulsory Licensing............ | 26 - 30 | |
Chapter V: | Termination of a Design Right...................................... | 31 - 33 | |
Chapter VI: | Obligation to Provide Information ................................ | 34 | |
Chapter VII: | Liability and Obligation to Provide Compensation....... | 35 - 40 | |
Chapter VIII: | Rules Concerning Legal Proceedings............................ | 41 - 44 | |
Chapter IX: | Special Provisions......................................................... | 45 - 49 |
(1) through manifest abuse to the detriment of the applicant or his predecessor in title;
5. Subject to the exceptions specified below, a design right implies that no one other than the owner of the right may, without the owner’s permission, use the design in the course of trade by making, importing, offering, offering for sale, assigning or hiring out an article that does not differ substantially from the design or includes something that does not differ substantially from it.
A design right relates only to the articles for which the design has been registered and to similar articles.
A design right does not give its owner the right to prohibit the use of an article protected by it if the article has been placed on the market within the European Economic Area by the owner of the design right or with his consent.
The decree shall specify in greater detail the conditions under which such priority may be enjoyed.
Chapter II
The Application for Registration and Processing Thereof
The application shall contain information concerning the article for which design registration is applied for. It shall mention the creator of the design. Where the applicant is not the creator, he shall produce evidence of his right to the design.
A representation of the design shall be attached to the application document. Where the applicant also deposits a specimen before the application is published under Article 18, the specimen shall be deemed to disclose the design. An attestation shall also be attached to the application in which the applicant confirms that the design to his knowledge has not, before the date on which the application is made or is deemed under the provisions of Article 8 to have been made, become so known as to preclude its registration under Articles 2 and 3.
On filing the application, the applicant shall pay the application fee and additional fees specified in Article 47.
Where the applicant fails within the prescribed period to submit a statement or to take steps to remedy a defect to which his attention has been drawn, the application shall be dismissed as abandoned. A warning to that effect shall be included in the Office instruction.
The application shall be reinstated however if, within two months after the expiration of the prescribed period, the applicant so requests and gives a response to the Office instruction or takes steps to remedy the defect and within the same period pays the prescribed reinstatement fee. Reinstatement may be granted only once.
At the applicant’s request, publication may however be deferred for a period of up to six months counted from the filing date or the date from which priority is claimed under Article
8. Requests for deferment shall be made on the application form.
Opposition shall be filed in writing with the registering authority within two months from the date of publication.
A decision to dismiss or to reject an application that has been published under Article 18 shall be published after the decision has acquired force of law.
Chapter III
Period of Validity of a Design Registration
current period of registration. The renewal and other fees specified in Article 47 shall be paid within the same period, failing which the application shall be rejected.
Renewal of a registration shall be published.
Chapter IV
Assignment, Licensing, Compulsory Licensing
26. A design right may be transferred.
Where the registered owner of a design has given another person the right to use the design in the course of trade (a license), the licensee may not assign that right in the absence of an agreement to that effect.
A license forming part of a business may however be assigned, when the business is assigned, in the absence of agreement to the contrary. In such a case the assignor shall remain responsible for ensuring the fulfillment of the license agreement.
27. In the event of the transfer or licensing of a design right, an entry to that effect shall, on request and for a prescribed fee, be made in the Register of Designs. The same shall apply to any pledge on the design right. If it is proved that a license or pledge recorded in the Register has ceased to be valid, the entry shall be removed.
The foregoing paragraph shall apply as appropriate to a compulsory license and to the right referred to in the second paragraph of Article 32.
In the case of a multiple registration, the transfer of a design right may be entered only in respect of all of the designs.
In legal proceedings or other business concerning a design right, the person whose name was last entered in the Register of Designs as the registered owner of the design shall be deemed to be the registered owner thereof.
Any person requesting the entry in the Register of an assignment of a design right or a license or a pledge on such a right shall, provided that he was acting in good faith at the time of the request, be unaffected by an earlier assignment of the design right or a right relating thereto that had not previously been the subject of a request for entry.
Chapter V
Termination of a Design Right
31. Where a design has been registered in violation of Articles 1, 2, 3 and 4 and an obstacle to registration still remains, the court shall, if an action is brought to that end, cancel the registration. Registration may not be canceled, however, on the ground that the person in whose name the registration was made is only a part-owner of the design right.
An action for cancellation of registration based on the grant of registration to a person who is not the rightful owner as defined in Article 1 may be brought only by the person claiming entitlement to the design. Such action shall be brought within one year after the plaintiff had knowledge of the registration and of the other circumstances on which the action is based. Where the registered owner of the design was acting in good faith when the design was registered or when the design right was transferred to him, the action may not be instituted more than three years after the registration.
In other cases the action may be brought by any person who suffers damage as a result of the registration. An action based on Article 4(1) or (2)(a) may be brought also by the Public Prosecutor.
32. Where a design has been registered in the name of a person who is not the rightful owner as defined in Article 1, the court shall, when an action is brought by the rightful owner, transfer the registration to him. The action shall be instituted within the periods stated in the second paragraph of Article 31.
Where a person who has been refused registration of a design has begun in good faith to use the design in the course of trade in Finland or has taken substantial steps to that end, he may, subject to payment of reasonable compensation and the fulfillment of other reasonable terms, continue such use or start the intended use, provided that its general character is preserved. In similar circumstances, the holder of a license entered in the Register shall have the same right.
The right defined in the foregoing paragraph may be transferred only together with the business in which the design is used or intended to be used.
33. Where the registered owner of a design declares in a written statement that he renounces his design right, the registering authority shall remove the design from the Register.
Where the design right is the subject of attachment or a pledge on it has been recorded in the Register, or where a dispute concerning the transfer of registration is pending before a court, the design may not be removed from the Register at the request of the registered owner for as long as the attachment or pledge subsists or the dispute has not been finally settled.
Chapter VI
Obligation to Provide Information
34. Where a person who has applied for registration of a design invokes his application when making a claim against another person before the application documents have become available to the public, he shall on request allow such other person to be given access to the documents.
Any person who states in direct contact with another person, in an advertisement, in an inscription or label on an article or its packaging or otherwise that registration of a design has been applied for or granted, but does not at the same time give information on the application or registration number, shall, if so requested, give such information without delay. Where it is not expressly stated that registration has been applied for or granted but where the circumstances so suggest, information shall, if requested, be given without delay on whether registration has indeed been applied for or granted.
Chapter VII
Liability and Obligation to Provide Compensation
35. Anyone who infringes a design right may be restrained by the court from continuing or repeating the act.
Where the infringement of the design right was intentional he shall, unless the act is punishable as an industrial property right offense under Article 2 of Chapter 49 of the Penal Code, be liable to a fine for violation of the design right.
Prosecution for the violation of the design right may be instituted by the Public Prosecutor only if the aggrieved party brings a legal action claiming the violation.
36. Any person who intentionally or through negligence infringes a design right shall pay reasonable compensation for the use of the design, as well as compensation for the further damage caused by the infringement. If the negligence was minimal, the amount of compensation may be reduced.
Anyone who infringes a design right unintentionally or without negligence shall pay compensation for the use of the design in so far as such compensation is found reasonable.
Proceedings for compensation on the grounds of infringement of the design right shall be instituted within five years from the time at which the damage was done, failing which the right to compensation will be forfeited.
37. If so requested by a person whose design right has been infringed, the court may order, on the basis of what is reasonable for preventing continued infringement, that an article made in or imported into this country in violation of another person’s design right, or an article whose use would constitute infringement of the design right, be altered in a certain way, be deposited in safe custody for the remainder of the period of protection, be destroyed or, where the article has been illegally manufactured or imported, be surrendered, against remuneration, to the person whose right has been infringed. This provision shall not apply to a person who has acquired the goods or a special right to them in good faith and who has not himself infringed the design right.
The goods defined in the foregoing paragraph may be confiscated if it appears that an offense under Article 2 of Chapter 49 of the Penal Code or Article 35 of this Act has been committed. The provisions of the general legislation on confiscation in criminal matters (Coercive Criminal Investigation Means Act (450/87)) shall be applicable in such an event.
Notwithstanding the provisions of the first paragraph of this Article, the court may, where special circumstances obtain and if so requested, issue an order giving the owner of the goods referred to in the said paragraph the right of disposal over those goods during the remainder of the period of protection, or part of it, in return for reasonable compensation and on other reasonable terms.
A fine shall be imposed upon any person who, in any case provided for in Article 34, gives wrong information, where punishment for the act is not specified in the Penal Code.
Any person who is guilty of an offense under this Article shall provide compensation for the damage caused. Where negligence is minimal, the amount of compensation may be reduced.
Proceedings based on the offenses defined in this Article may be instituted by the Public Prosecutor only if the aggrieved party brings a legal action claiming the offense.
Chapter VIII
Rules Concerning Legal Proceedings
41. The registered owner of a design, or any person entitled to use the design under a license or compulsory license, may bring an action to determine whether the registration protects him against another person where there is some uncertainty as to the relationship that is detrimental to him.
Subject to the same conditions, any person who carries on or intends to carry on a business activity may bring an action against the registered owner of a design to determine whether the registration is an impediment of any kind to the activity.
Where it is claimed, in a case provided for in the first paragraph of this Article, that the registration of a design is invalid, the second paragraph of Article 39 shall apply correspondingly.
42. Any person wishing to bring an action for cancellation or transfer of the registration of a design or for the grant of a compulsory license shall notify the registering authority accordingly and inform all persons who, according to the Register of Designs, hold licenses to use the design or pledges thereon. A licensee wishing to bring an action for infringement of a design right or for a ruling under the first paragraph of Article 41 shall inform the registered owner of the design accordingly.
The obligation to give notice under the foregoing paragraph shall be deemed to have been fulfilled when such notice has been sent by registered mail to the address recorded in the Register.
If it is not shown, when the action is brought, that notice or information has been given in accordance with the first paragraph of this Article, the court shall allow the plaintiff time to do so. If he fails to make use of the time allowed, his action may not be taken up for examination.
Chapter IX
Special Provisions
49. This Act shall enter into force on April 1, 1971.
* Finnish title: Mallioikeuslaki 12.3.1971/221. Entry into force (of last amending Act): September 1, 1995. Source: Communication from the Finnish authorities. Note: Translation by the International Bureau of WIPO on the basis of a translation supplied by the Finnish
authorities.
** Added by the International Bureau of WIPO.