IP/N/6/FIN/1

Finland

The Circuit Court of Helsinki (Helsingin Käräjäoikeus) has the jurisdiction over infringement cases of industrial property rights. In cases of infringement of a patent, utility model or a right to the layout-design of an integrated circuit, the court is assisted by two technical experts. Decisions of the Helsinki Circuit Court in IPR infringement cases may be appealed to the Helsinki Court of Appeal and further to the Supreme Court in accordance with the ordinary civil judicial procedure. The Market Court decides the matters that according to the Unfair Business Practices Act belong to its competence. This includes injunction in cases of infringement of rights concerning protection of undisclosed information. The ordinary appellation procedure does not apply to the decisions of the Market Court. The party that has been imposed a conditional fine, may, however, appeal the decision to the Supreme Court, as considers the amount of the fine. Decisions of the Market Court may be applied to the Supreme Court according to the supplementary appellation procedure, whereby the provisions of the Code of Procedure Chapter 31 are for the suitable parts applied. The first instance in copyright cases is the circuit court of the habitual residence (forum domicilii) of the defendant. The legal venue is thus determined according to general provisions of the Code of Procedure concerning jurisdiction in civil litigation. Prorogation on jurisdiction is allowed in civil copyright cases. Certain additional provisions complementing the forum domicilii - principle are also given in the Code of Procedure. A specific forum on the basis of the factual (substantial) connection is prescribed for in Section 61 of the Copyright Act, according to which the Circuit Court of Helsinki has jurisdiction in cases involving radio or television broadcasts which violate the Copyright Act. Appeal is submitted the ordinary way comprising two appellate instances (Court of Appeal and the Supreme Court. In the latter, a leave to appeal is required as a prerequisite, though). (Trademarks Act, Section 42; Patents Act, Sections 65-67; Design Protection Act, Section 43; Act on the exclusive right to the layout-design of an integrated circuit, Sections 42-43; Utility Model Act, Sections 43-44; Market Court Act, Sections 1 and 16; Unfair Business Practices Act, Sections 6-8; Copyright Act, Section 61; Code of Procedure, Chapter 10)

Proceedings instituted on the grounds that the right has been granted to a person other than entitled to it may only be instituted by the person claiming to have a better right therein. In other cases, proceedings for declaration of invalidity may be instituted by any person who suffers damage as a result of the grant of the right or by a public prosecutor for reasons of public interest. The right-owner, or any person who may exploit the protected right under a licence, may bring an action for declaratory judgement to establish whether he enjoys protection against other parties, where uncertainty exists. It is also possible to bring an action to obtain a declaratory judgement to establish whether the particular registration prevents one's commercial activity. Proceedings may also be initiated by a person claiming for a compulsory licence, or for determination of new conditions for a licence. In IPR infringement cases, the registered right-owner and the licensee have standing to assert IPRs. If the holder of the right has no domicile in Finland, an attorney domiciled in the country is necessary for the receiving of the summons and other documents. The parties may in civil cases be represented before the court personally or by an attorney or another agent to represent them. The court may, however, order a party or his representative to appear personally before the court where it deems it necessary for the inquiry of the case. (Trademarks Act, Sections 27, 31, 45-46; Patents Act, Sections 52-53, 63, 71; Design Protection Act, Sections 31-32, 41, 45; Act on the exclusive right to the layout design of an integrated circuit, Sections 20, 30; Utility Model Act, Sections 10, 15, 31; Code of Procedure, Chapter 12, Section 7)

General provisions concerning a party's obligation to produce written evidence on demand (editio) are given in Chapter 17, Sections 11b to 17 of the Code of Procedure. Article 12 states that anyone in possession of a document assumed to have evidentiary value in the case has an obligation to produce such evidence. The obligation does not, however, extend to a person suspected in a criminal case or anyone related to him. Where a party has an obligation to produce a document, the court may, under the penalty of a fine, issue an order to him to do so. The obligation may be imposed at the request of the opposing party. Chapter 5, Section 21 of the Code of Procedure provides for a procedure where the counterparty has to announce, at the request of the other party, whether he is in possession of a certain document.

A witness or a party to a case may refuse to give information that includes business or professional secrets, unless for most important reasons it is necessary to have the information disclosed (Code of Procedure, Chapter 17, Section 24 and Chapter 21, Section 65: see further point 6 below). If confidential information concerning other party's business or know-how is submitted before the court, the mentioned party may demand that this information should be declared confidential. According to the Act on Publicity of Administration of the Law, the court may in certain cases order the hearings to be held behind closed doors. If in such hearings information has been revealed concerning which secrecy is applied at the court, the court may order that the information shall continue to be kept secret for a certain period of time.

(a)Injunctions According to the relevant IPR legislation, the court may make an order forbidding the person infringing the IPR from continuing or repeating the infringement. It is possible to pursue an independent action for injunction. Request concerning injunction can be made in civil cases as well as in criminal proceedings. (Trademarks Act, Section 38; Patents Act, Section 57; Design Protection Act, Section 35; Utility Model Act, Section 36) (b)Damages Any person who intentionally or by negligence infringes an industrial property right is liable to pay reasonable compensation for the damage caused by the infringement. In case of slight negligence, the compensation may be adjusted accordingly. In cases where the infringement is neither intentional nor negligent, the infringer shall pay compensation for the exploitation of the invention if and to the extent considered reasonable. In copyright cases, the defendant cannot exculpate himself out of compensation to the holder of the infringed right for the infringing use (strict liability). In the case of wilful or negligent conduct, the infringer is to pay damages even for any other loss, for possible mental suffering and for other injury caused by the infringement, in addition to fair compensation. (Trademarks Act, Section 38; Patents Act, Section 58; Design Protection Act, Section 36; Act on the exclusive right to the layout-design of an integrated circuit, Section 38; Utility Model Act, Section 37; Copyright Act, Section 57; Act on Damages and Tort Liability) General provisions on damages deriving from non-contractual liability are included in the Act on Damages and Tort Liability. Coverable loss extends to all kinds of appraisable property damages, including litigation expenses. The amount of compensation is based on the court's assessment, where both the objective of material compensation as well as the specific circumstances are taken into account. Rules for the determination of the damages have been established in court practice in all fields of IPRs. Claims can be presented both in civil and criminal proceedings. (c)Destruction or other disposal of infringing goods and materials/implements for their production In IPR infringement cases, the court may prescribe, upon the demand of the injured party, that the infringing material (produced copies, manufacturing material or devices, etc.) shall be destroyed or altered or that such property be conveyed to the injured party against compensation covering manufacturing expenses, unless the acquirer of the infringing property in question has acted in good faith. Claims based on an infringement can be presented both in civil as well as in criminal proceedings. (Copyright Act, Section 58; Trademarks Act, Section 41; Patents Act, Section 59; Design Protection Act, Section 37; Act on the exclusive right to the layout-design of an integrated circuit, Section 39; Utility Model Act, Section 38) (d)Other remedies See point 10; provisional measures

There are no provisions empowering the judicial authorities to give such orders.

In civil cases, the expenses are, as a general rule, covered by the plaintiff whose claim was rejected. Specific provisions on unfounded litigation and expenses caused by such action are given in Section 4 to 6 of Chapter 21 of the Code of Procedure. Misappropriation or a misuse may lead to liability to cover the expenses caused thereby. General provisions on the indemnification liability of the authorities (administrative authorities and public corporates) are given in the Act on Damages and Tort Liability. The authorities are liable for damages resulting from wilful or negligent erroneous exercise of the authority. In general, the liability may extend wholly or partially even to individual functionaries on the basis of vicarious liability, except for the cases of only slight negligence. Administrative actions taken in good faith do not cause liability.

There are no such provisions in the laws of Finland. The length of proceedings is under the control of the court. In civil cases, the proceedings in court start with preliminary hearings. The preliminary hearings should be concluded without delay; if possible, in one session. The parties should prepare themselves for the hearing adequately, so that there would be no need to postpone the proceedings due to the party's negligence. A case may in certain cases be decided already at the preliminary stage. In other cases, the case shall be brought to a main hearing. The main hearing shall, as a general rule, continue without interruption until the case is ready for decision of the court. The general rule concerning the costs in civil proceedings, according to Chapter 21, Section 1 of the Code of Procedure, is that the party who loses the case shall reimburse his opponent for the litigation expenses, subject to provisions to the contrary. The compensation shall, under Article 8 of Chapter 21, fully cover the expenses for the preparation and presentation of the action, including attorney's fees, to the extent that the expenses can reasonably be justified for the protection of the party's interest. The length and cost of proceedings vary case by case. It is not possible to indicate any data concerning the actual duration of proceedings or their cost.

Except for some limited provisional measures there are no administrative judicial procedures applicable as to remedies in this context. As regards administrative procedures in the field of executive authority, the means are limited to the specific provisional measures dealt with below.

According to the relevant industrial property laws, if an infringement may be presumed to have taken place, the infringing goods may, to prevent continuation of the infringement, be ordered to be seized or taken into safekeeping. There are no specific provisions on provisional measures in the Copyright Act. General provisions concerning judicial precautionary measures in civil matters are contained in Chapter 7 of the Code of Procedure. Where a party can show a probable case that he holds a claim, which may be enforced on the basis of the court's future resolution as prescribed in the Execution Act, and it can be assumed that the adverse party will evade the payment through absconding, destroying, giving away the property or otherwise, the court may order provisional attachment of the adverse party's property to such extent that the claim can presumably be covered. The court may also, under similar preconditions, prohibit the opposing party from exercising a certain activity, or order him to perform a certain act, empower the applicant to perform an act, the property of the opposing party to be placed under the administration or care of a trustee, or other measures necessary to secure the right of the applicant. Provisions on seizure in criminal proceedings are contained in Chapters 3 and 4 of the Act on coercive Means of Criminal Investigation. An object or a specific good, including documentary material, may be confiscated or seized if there is reason to presume that the goods in question may serve as evidence or that the court shall later order them forfeit. At the request of the plaintiff, the court may also grant an interlocutory injunction on use of the goods claimed to be infringing. The prohibition will remain in force until final judgement in the matter of substance has been reached, if not otherwise decided. Interlocutory injunctions may also be imposed in cases of disclosure of trade secrets, in which case the prohibition is ordered by the Market Court. (Trademarks Act, Sections 41 and 48; Patents Act, Sections 59 and 68; Design Protection Act, Section 37; Act on the exclusive right to the layout-design of an integrated circuit, Section 39; Utility Model Act, Section 38; Unfair Business Practices Act, Section 7; Act on Coercive Means of Criminal Investigation, Chapter 4; Code of Procedure, Chapter 7; Execution Act, Chapter 3)

The provisional measures contained in Chapter 7 of the Code of Procedure may be imposed by the court on application of the interested party. According to Section 5 of Chapter 7 of the Code of Procedure, precautionary measures shall not be granted without reserving the opposing party an opportunity to be heard. The court may, however, give a provisional decision ordering a precautionary measure at a request by the applicant, if the purpose of the measure might otherwise be compromised. Such a decision shall remain in force until further notice. In criminal cases, seizure may be ordered by the authority entitled to make an arrest, or by the court in the course of proceedings. If the person on whose premises the good is seized is not present, he shall immediately be informed about the seizure (Act on Coercive Means of Criminal Investigation, Chapter 4, Sections 5 and 7).

Precautionary measures in civil matters described in the Code of Procedure, Chapter 7, may be imposed by the court on request of the interested party. The request may not be approved without given the opposing party an opportunity to be heard. If the purpose of the measure might be endangered, the court may, however, decide on a provisional precautionary measure without giving a party the opportunity to be heard. The decision remains valid until otherwise decided. An action in the matter of substance has to be brought within six months from the decision on the precautionary measure. In connection with the decision in the matter of substance, the court must define the period of validity of the measure. If the action is dismissed, the court may order the measure to be cancelled only after final judgement in the matter. If the action is cancelled, the measure must be cancelled accordingly. The party that has unfoundedly acquired a precautionary measure must cover the costs caused by it. An appeal against a decision on a precautionary measure may be lodged separately. For initiation in criminal cases, see point 11 above. The seizure may be cancelled by the same authority who imposed it. Cancellation has to take place as soon as the seizure no longer is necessary or if a charge for the crime causing it is not brought within four months. On request of the relevant authority, the court may extend this time limit. On request of a person involved, the court has to decide on validity of the seizure. If the request is made before the court has started to handle the charge, it has to be taken under consideration within a week's time. The court has to give the parties involved an opportunity to be heard, but an absence of a party does not preclude a decision in the matter. An appeal against a decision concerning seizure, as well as against a decision prohibiting the person infringing the IPR from continuing or repeating the infringement, may be lodged separately. The appeal does not, however, prevent the measure. The appellant may in some cases be obliged to give a securtiy for the damage and disadvantage that may be caused by the measure. Execution Act, Chapter 7 contains provisions on enforcement of the precautionary measures. A measure may not be put into effect, and the enforcement has to be discontinued, if the opposing party gives the executor a security which has been approved by the party requesting the measure, or which is considered to be proportional to the need for protection of the rights of the requesting party. A decision on a precautionary measure may not be put into force, unless the requesting party gives a security for the damages that may be caused by the measure.

The length and cost of proceedings vary case by case. There is no public data available concerning the actual duration of proceedings or their costs.

According to Section 11a of Chapter 7 of the Execution Act, in case that the purpose of the precautionary measure prescribed in Sections 1-3, Chapter 7 of the Procedural Code would otherwise be endangered, the said measures may be granted by the public executor, if the requesting party has legal grounds for his application and the application cannot immediately be granted by the court. The maximum period of validity for such decision and measure is six month, unless renewed by the executor on special grounds. As regards provisional measures by administrative authorities in the course of criminal investigations, see points 11 and 12 above (Chapter 4 of the Act on Coercive Means of Criminal Investigations).

According to Council Regulation (EEC) No. 3295/94, the suspension of the release into free circulation may be applied to counterfeit goods, i.e. to goods, including the packaging thereof, bearing without authorization a trademark which is identical to the trademark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such trademark, and which thereby infringes the rights of the holder of the trademark in question. The procedure is also applied to any trademark symbol whether presented separately or not, as well as to packaging materials presented separately, bearing the trademarks, of counterfeit goods (Article 1(2)(a); counterfeit goods). The suspension procedure may also be applied to goods which are or embody copies made without the consent of the holder of the copyright or neighbouring rights, or of the holder of a design right, whether registered under national law or not, or of a person duly authorized by the holder in the country of production (Article 1(2)(b); pirated goods). The suspensive procedure does not apply to goods of a non-commercial nature contained in travellers' personal luggage (Article 10) or to goods which bear a trademark or which are protected by a copyright or neighbouring right or a design right and which have been manufactured with the consent of the holder of the right but are placed into free circulation; export, re-export or a suspensive procedure, without the consent of the holder (Article 1(4)).

The holder of a right may lodge an application for the suspension of the release of goods with any office of the customs authority. The decision on the initiation of the procedure is made by the control and inspection unit of the National Board of Customs. The application shall include a sufficiently detailed description of the goods and a proof that the applicant is the holder of the right for the goods in question. The application must also specify the length of the period during which the customs authorities are requested to take action (Article 3(2) and 3(3)). If, within 10 working days of notification of suspension of release or of detention, the customs office has not been informed that the matter has been referred to the court, the goods shall be released, provided that the customs formalities have been complied with and the detention order has been revoked. This period may be extended by a maximum of 10 working days in appropriate cases (Article 7(1)). No security or administrative payments are requested from the applicant. The owner of the goods may bring an action for recovery of damages resulting from the unfounded detention of the goods. The customs authorities shall notify the holder of the right, at his request, of the name and the address of the declarant and, if known, of those of the consignee (Article 6(1)). The customs authorities shall also inform the holder of the right, upon request, of the names and addresses of the consignor, of the importer or exporter and of the manufacturer of the goods found to be counterfeit or pirated and of the quantity of the goods in question (Article 8(3)). The customs authorities shall afford the applicant the opportunity to inspect the goods whose release has been suspended (Article 6(1)).

The application procedure in the National Board of Customs is normally taken care of within one working day. Not included a few exceptions, the matters have been brought before the court within 10 working days. When extending the period, the Board of Customs has carefully considered the grounds for the application. The given extension has usually been from three to five working days.

If it becomes apparent in the customs office that the goods are counterfeit or pirated, the customs authorities may inform the holder of the right of the risk of infringement (Customs Code, Article 25). In this case, the customs authorities may suspend the release of the goods or they may keep it for three working days, as to enable the holder of the right to lodge an application for appropriate measures.

A negative decision by the National Board of Customs concerning the application may be appealed to the Supreme Administrative Court. A decision by a district customs office suspending the release of the goods into free circulation may be appealed to the National Board of Customs and further to the Supreme Administrative Court.

The Circuit Court of Helsinki has the jurisdiction over criminal acts of infringement of industrial property rights. Jurisdiction in cases of disclosing of confidential information as described in the Unfair Business Practices Act, belongs to the court of first instance in the district of which the crime was committed. In copyright cases, the competent authority of first instance is the circuit court of the place where the crime was committed (forum delicti). The sole supplementary forum on the basis of the factual (substantial) connection is prescribed in Article 61 of the Copyright Act, according to which the Circuit Court of Helsinki has the jurisdiction in cases involving radio or television broadcasts which violate the Copyright Act. (Trademarks Act, Section 42; Patents Act, Section 65; Design Protection Act, Section 43; Act on the exclusive right to the layout-design of an integrated circuit, Section 42; Utility Model Act, Section 43; Copyright Act, Section 61; Code of Procedure, Chapter 10, Sections 21 to 25) Procedure of appeal in above mentioned cases follows the ordinary way of appeal with two appellate instances (Court of Appeal and the Supreme Court, the latter being subject to leave to appeal).

Criminal procedures and penalties with ordinary channels of appeal are available in respect of intentional infringements of all intellectual property rights contained in the TRIPS Agreement. (Penal Code, Chapter 49: on offences against certain intellectual property rights; Trademarks Act, Article 39; Patents Act, Article 57; Design Protection Act, Article 35; Act on the exclusive right to the layout-design of an integrated circuit, Article 35; Utility Model Act, Article 39; Unfair Business Practices Act, Article 10, as well as Penal Code, Chapter 30, Articles 5-6: disclosure of trade secrets) In certain copyright cases, even gross negligence may constitute an infringement (copyright offence) punishable under the Copyright Act (Articles 56 to 56d of the Copyright Act).

In cases of crimes defined in the Penal Code, Chapter 49, a public prosector may initiate criminal proceedings if the injured party reports an intellectual property crime for prosecution, or for reasons of important public interest, on his own initiative (Penal Code, Chapter 49, Section 3 and Chapter 30, Section 12). In cases of offences of intellectual property rights defined in the relevant substance laws, a public prosecutor may initiate proceedings only if the injured party reports an offence of an intellectual property right for prosecution (provisions: see point 21 above as well as Unfair Business Practices Act, Section 11). Minor exceptions to the general rule of complainant action are prescribed in the Copyright Act, regulating violations of the moral rights of the author and the safeguard of the public interest in certain specific cases (Copyright Act, Section 62).

The injured right holders may for the time being initiate criminal proceedings individually. If the injured party wishes a public prosecutor to initiate proceedings he must make a demand for legal action to the prosecutor or to the police within statutory time. Public prosecutor is obliged to prosecute, unless owing to the lack of sufficient evidence the prosecution would be of no actual cause. If a public prosecutor has initiated an action, the injured party has a right to join the criminal action. According to the bill for a renewed act on criminal procedure, the complainant will be entitled to institute proceedings only secondarily, in so far as the public prosecutor has decided not to bring an action.

Imprisonment and monetary fines For intellectual property crimes contained in Chapters 49 and 30 of the Penal Code may as a penalty be inflicted fines of imprisonment of maximum two years. For intellectual property offences according to the provisions of the relevant substance laws, as well as provisions of the Unfair Business Practices Act concerning disclosure of trade secrets, may as a penalty be inflicted fines (provisions: see point 21 above). Seizure, forfeiture and destruction of infringing goods and materials and implements for their production The infringing goods may be ordered to be seized, destroyed, altered, handed over to the right holder against a redemption or taken into safekeeping. Provisional seizure may also be ordered for the time of the proceedings (see further points 5 and 10 above). In criminal cases, seizure follows the provisions of Chapter 4 of the Act on Coercive Means of Criminal Investigation. (Trademarks Act, Section 41; Patents Act, Sections 59 and 68; Design Protection Act, Section 37; Act on the exclusive right to the layout-design of an integrated circuit, Section 39; Utility Model Act, Section 38; Copyright Act, Sections 58 to 60)

The length and costs of proceedings vary case by case. There is no public data available concerning the actual duration of proceedings or their costs.