IP/N/6/FIN/1/Add.1

Finland

The Helsinki District Court (Helsingin käräjäoikeus) has the jurisdiction over cases of infringement involving 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 District 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, including cases involving slavish imitation, 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 regarding the amount of the fine. Decisions of the Market Court may be appealed to the Supreme Court if the petition for leave of appeal is granted. The provisions on extraordinary appeal in Chapter 31 of the Code of Procedure are applied where appropriate. In copyright cases, the court of first instance is the district 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. The Code of Procedure also provides for certain additional provisions complementing the forum domicilii principle. 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 Helsinki District Court has jurisdiction in cases involving radio or television broadcasts violating 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 however required as a prerequisite).

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 holder 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 compulsory licence. In IPR infringement cases, the registered right holder and the licensee have standing to assert intellectual property rights. The parties may in civil cases be represented before the court personally or by an attorney or another agent on their behalf. 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.

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. In addition, there is an Act on Safeguarding the Evidence in Civil Actions concerning Immaterial Property Rights, which has entered into force in 2000. Chapter 17, Section 12 of the Code of Procedure 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. In criminal cases the provisions of the Coercive Measures Act on seizure and house search are applied. According to Chapter 4, Section 1 of the Coercive Measures Act, a product may be seized if it is assumed to have evidentiary value in a criminal case. According to Chapter 5, Section 1 of the said Act, a house may under certain conditions be searched for example to find a product to be seized. Where a party has an obligation to produce a document, the court may, under the penalty of a fine, issue him an order to do so. The court may also order the document to be produced by a distrainer. The obligation may be imposed at the request of the opposing party. There are also rules on 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 a statement which would reveal a business or professional secret unless very important reasons, or when the case concerns a severe crime, require the information be disclosed (Code of Procedure, Chapter 17, Section 24). If confidential information concerning other party's business or know-how is submitted before the court, the said 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. (Sections 5, 5b and 9 of the Act on the Publicity of Court Proceedings, and Section 24(20) of the Act on the Openness of Government Activities). The Act on the Openness of Government Activities (Chapter 6) provides rules on document secrecy and prohibition of use of secret information in the case of an expert referred to in the Act to Safeguard the Evidence in Civil Actions concerning Intellectual Property Rights or an applicant who due to his position as a party has acquired information covered by the secrecy obligation.

Injunctions According to the relevant IPR legislation, the court may make an order forbidding the person infringing the IPR to continue or repeat the infringement. It is possible to bring an independent action for injunction. Request concerning injunction can be made in civil cases as well as in criminal proceedings. 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 rights holder for the infringing use (strict liability). In the case of wilful or negligent conduct, in addition to fair compensation, the infringer is to pay damages even for any other loss, for possible mental suffering and for other injury caused by the infringement. General provisions on damages deriving from non-contractual liability are included in the Tort Liability Act. 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 IPR fields. Claims can be presented both in civil and criminal proceedings. 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 and criminal proceedings. The Act to Safeguard the Evidence in Civil Actions concerning Immaterial Property Rights (Section 2) provides that a competent court may decide that material that is assumed to have significance as evidence may be subjected to seizure in order to safeguard the presentation of evidence. Other remedies See point 10: provisional measures

In a civil case, a party may be heard for evidentiary purposes. A party shall keep the truth when making statements on the circumstances invoked by him in the case, when commenting on the circumstances invoked by the opposing party, and when replying to the questions put to him (Chapter 14, section 1 of the Code of Procedure). In a criminal case any person, whom is assumed to possess information of the offence, is obliged on a summons by the court to appear at a pre-trial investigation in accordance with section 17 of the Criminal Investigations Act. According to section 18 of the said Act, if that person fails to appear at a pre-trial investigation without an acceptable reason, he may be brought thereto. The suspect of an offence may also be arrested or taken into custody under conditions set forth in Chapter 1 of the Coercive Measures Act.

General provisions on the indemnification liability of the authorities (administrative authorities and public corporations) are provided in the Tort Liability Act. 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. Chapter 10 of the Penal Code provides rules for forfeiture. The proceeds of crime shall be ordered forfeit to the State. The forfeiture shall be ordered on the offender, a participant or a person on whose behalf or to whose advantage the offence has been committed, where there have benefited from the offence. (Chapter 10, section 2) The Chapter also provides rules for extended forfeiture of the proceeds of crime and forfeiture of certain other property. If an object or property cannot be ordered forfeit because, e.g., the object or property has been hidden or it is otherwise inaccessible, a full or partial forfeiture of the value of the object or property may be ordered on the offender, a participant or a person on whose behalf or to whose advantage the offence has been committed.

There are no specific provisions governing the length of proceedings in the Finnish law. In civil cases, court proceedings 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. Sometimes a case may 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 the decision of the court. The length of proceedings is under the control of the court and therefore varies from case to case. In 2004 the average length of proceedings of all civil cases decided on the main hearing was about 10 months. 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 be liable for all reasonable costs incurred by the necessary measures of the opposing party, unless otherwise provided by an Act. The compensation shall, under Chapter 21, Article 8, fully cover the costs of the preparation for the trial and the participation in the proceedings, as well as the fees of the attorney or counsel, to the extent that the expenses can reasonably be justified for the protection of the party's interest. There are provisions governing the court fees in the Finnish legislation. In Finland the court fees are low in general. For example, the court fee for a civil case decided with the full composition is 160 euros. The other legal costs result from possible attorney fees as agreed between a party and an attorney. In 2004 the average of the legal costs was 6600 euros and the median 3800 euros in civil cases decided on the main hearing. Regarding plaintiffs’ claims, the average was 6900 euros and the median 4900. With regard to defendants’ claims, the average was 7300 euros and the median 4300 euros. The Legal Aid Act provides rules for the determination of attorney fees and expenses when the legal aid is given at the expense of the State to a person who needs legal assistance and who for lack of means cannot himself pay the expenses (Chapter 3 of the Legal Aid Act)

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 discussed 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 and in the Act to Safeguard the Evidence in Civil Actions concerning Intellectual Property Rights. If the petitioner can establish a probability that he/she holds a debt that may be rendered payable as prescribed in the Enforcement Act, and that there is a danger that the opposing party hides, destroys or conveys his property or takes other action endangering the payment of the debt, the court may order the attachment of the real or movable property of the opposing party to an amount securing the debt. The court may also, under similar preconditions, prohibit the opposing party from exercising a certain activity, order him to perform a certain act, empower the petitioner to perform certain act, order the property of the opposing party to be placed under the administration or care of a trustee, or order other measures necessary for securing the right of the petitioner. Provisions on seizure in criminal proceedings are contained in Chapters 3 and 4 of the Act on Coercive Measures. 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.

The decision to undertake precautionary measures under Chapter 7 of the Code of Procedure may be made, on petition, by a general court of law. According to Chapter 7, Section 5 of the Code of Procedure and Sections 4 and 5 of the Act to Safeguard the Evidence in Civil Actions concerning Intellectual Property Rights, precautionary measures shall not be granted without reserving the opposing party an opportunity to be heard. However, if the purpose of the precautionary measures can otherwise be compromised, the court may on the request of the petitioner give an interim order on precautionary measures without reserving the opposing party the said opportunity. In such case the order shall remain in force until further notice. In criminal cases, a 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 (Coercive Measures Act, Chapter 4, Sections 5 and7).

The court may, on petition, impose precautionary measures in civil matters under Chapter 7 of the Code of Procedure and Sections 4 and 5 of the Act to Safeguard the Evidence in Civil Actions concerning Intellectual Property Rights. Precautionary measures shall not be granted without reserving the opposing party an opportunity to be heard. However, if the purpose of the precautionary measures can otherwise be compromised, the court may on the request of the petitioner give an interim order on precautionary measures without reserving the opposing party the said opportunity. In such case the order shall remain in force until further notice. An action on the main issue has to be brought within one month from the decision on the precautionary measures. When the court decides on the main issue, it shall at the same time determine how long the precautionary measures remain in force. If the action is dismissed or ruled inadmissible, the court may at the same time order that the precautionary measures remain in force until the main decision becomes final. If the action is abandoned, the precautionary measures are cancelled. A petitioner who has unnecessarily resorted to precautionary measures must cover the costs incurred. A court order on precautionary measures may be appealed separately. For initiation in criminal cases, see point 11 above. The seizure may be cancelled by the same authority that 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. At the request of the relevant authority, the court may extend this time limit. At the 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. 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 to continue or repeat 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 security for the damage and disadvantage that may be caused by the measure. Chapter 7 of the Enforcement Act 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. The general rule is that a decision on a precautionary measure may not be put into force unless the petitioner provides a security for the damages that may be caused by the measure. The court may, on petition, release the applicant from providing the security referred to in Chapter 7, section 16 of the Enforcement Act, if the petitioner is found unable to do so and if his right is deemed manifestly well-founded.

The length and costs of proceedings vary case by case. In an obvious case precautionary measures may be granted expeditiously. The issue of the final liability to cover the expenses incurred by the application and enforcement of the precautionary measures shall be decided when the main issue is being dealt with.

According to Chapter 7, Section 11a of the Execution Act, in case that the purpose of the precautionary measures prescribed in Chapter 7, Sections 1-3 of the Code of Procedure 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 Coercive Measures Act).

As a Member State of the European Community (EC) Finland applies the relevant Community law as follows: According to Council Regulation (EC) No 3295/94, the suspension of the release for 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 bearing the trademarks of counterfeit goods presented separately (Article 1(2)(a)). 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)). The procedure applies also to goods infringing a patent under the law of that Member State or a supplementary protection certificate as provided for by Council Regulation (EEC) No 1768/92 or Regulation (EC) No 1610/96 of the European Parliament and of the Council. 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 a 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 scope of Regulation (EC) No 3295/94 was extended on 1 July 2004, when the new Council Regulation (EC) No 1383/03 entered into force. The scope now encompasses also geographical indications and plant breeders’ rights.

According to Council Regulation (EC) No 3295/94, 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 ten (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 ten (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 procedure was changed to some extent due to the entry into force of Regulation (EC) No 1383/03 on 1 July 2004, meaning, for instance, that a right holder shall provide more detailed information in the application, which will be made on a single standard form in all European Union Member States. Application fees and securities are abolished and replaced by a standard declaration by the applicant to bear all costs incurred in keeping goods under customs control (Article 6).

The application procedure is normally taken care of at the National Board of Customs within one working day. The matters have, with few exceptions, been brought before the court within ten (10) working days. When extending the period, the Board of Customs has carefully considered the grounds for the application. The given extension has been ten working days. According to (EC) Regulation No 1383/03, when granting an application for action, the competent customs department shall specify the period during which the customs authorities are to take action. That period shall not exceed one year.

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, Section 25). In this case, the customs authorities may suspend the release of the goods or they may keep it for three working days, so as to enable the holder of the right to lodge an application for appropriate measures. More detailed provisions were included in (EC) Regulation No 1383/03.

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 Helsinki District Court has the jurisdiction over criminal acts of infringement of industrial property rights. Jurisdiction in cases of disclosure of confidential information as described in the Unfair Business Practices Act belongs to the court of first instance in the district where the crime was committed. In copyright cases, the competent authority of first instance is the district court of the place where the crime was committed (forum delicti). The only supplementary forum on the basis of the factual (substantial) connection is prescribed in Article 61 of the Copyright Act, according to which the Helsinki District Court has the jurisdiction in cases involving radio or television broadcasts which violate the Copyright Act. The 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. 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 Finland, the police and the Customs are investigators responsible for initiating criminal proceeding. Infringements of industrial property rights and copyright are so-called complainant offences, which means that the “victim” shall report the crime before proceedings can be initiated. In exceptional cases, proceedings may be initiated without a crime report from the holder of the right/complainant. According to Chapter 1, Section 14 of the Criminal Procedure Act, the complainant has the possibility of bringing charges in respect of an offence only in case the public prosecutor decides not to prosecute or the investigator or the prosecutor decides not to execute investigation or decides that an ongoing investigation will be suspended or concluded. In cases of crimes defined in Chapter 49 of the Penal Code the public prosecutor 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 (Chapter 49, Section 3 and Chapter 30, Section 12 of the Penal Code). In cases of offences of intellectual property rights defined in the relevant substance laws, the public prosecutor shall not bring charges for offences of an intellectual property right, unless the injured party reports it for the bringing of charges or unless a very important public interest requires that charges be brought. (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).

According to Chapter 1, Section 14 of the Criminal Procedure Act, the complainant has the possibility of bringing charges in respect of an offence only in case the public prosecutor decides not to prosecute or the investigator or the prosecutor decides not to execute investigation or decides that an ongoing investigation will be suspended or concluded. 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 Chapter 49, Section 3 of the Penal Code, the public prosecutor 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.

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 a maximum of 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 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 Coercive Measures Act.

The length and costs of proceedings vary from case to case. There is no first instance court fee in criminal cases instituted by the public prosecutor. According to statistics in 2004, 56 percent of criminal cases dealt with in district courts were concluded in less than 2 months. The proceedings last over 6 months in only 8 percent of the cases.