To answer this question, it is necessary to distinguish between (i) bringing an action in order to prohibit the use of an unregistered well-known mark, and (ii) an action brought to cancel a registered mark that conflicts with an unregistered well-known mark. (i) In the first case (prohibition of use), against this misleading act carried out by a third party (Article 6, Law 3/1991 on Unfair Competition) or against this act of exploitation of another's reputation (Article 12, Law 3/1991) the owner of the unregistered well known mark can bring the following actions concerning unfair competition (Article 18, Law 3/1991): primarily, an action for cessation of the act, and an action for damages. No additional conditions are required to bring such actions. (ii) In the second case - action for cancellation of a registered mark that conflicts with a well-known mark - the owner of the unregistered well-known mark must at the same time make the corresponding application for registration of that mark. In accordance with Article 3 of the Trademark Law of 10 November 1988, the user of a mark that is well-known in Spain to the interested sectors may apply to the courts for the cancellation of a registered mark for identical or similar products that could create confusion with the well-known mark, provided such action is brought within five years of the date of publication of the granting of the registered mark, unless the latter has been applied for in bad faith, in which case the action for cancellation is not subject to any time-limit.

In the case of a well-known mark (extending its protection to dissimilar products) a preliminary distinction must be made as to whether or not the mark is registered. If it is not, please refer to the reply to follow-up question (a) above. Where the well-known mark is a registered mark, protection is provided under the Spanish Trademark Law of 10 November 1988, which prohibits the registration as a mark of signs that involve benefiting unduly from the reputation of other registered signs or media (Article 13(c)). In addition, Article 35 of the same Law establishes that the owner of a registered mark may bring the appropriate civil or criminal actions against persons who infringe their rights and apply for measures necessary to safeguard the latter.

As mentioned above (see reply to follow-up question (a) above), the user of a mark that is well-known in Spain to the interested sectors may take action against the registration of a mark that is likely to give rise to confusion with the well-known mark. To this end, it may apply to the courts for the cancellation of the registered mark (Article 3, Law 32/1988 on Trademarks). The competent jurisdiction is established in Title XIII of Law 11/1986 on Patents. An action may also be brought for unfair competition, with a claim for damages (Article 18). In this case the handling of the case is also governed by the Law of Civil Procedure for proceedings of minor jurisdiction, and territorial jurisdiction is determined by Article 23 of Law 3/1991 on Unfair Competition.

The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark (Article 15.4 of the TRIPS Agreement). This concept was incorporated in the Spanish legal system for trademarks after the rule emerged in the context of the Paris Convention as Article 7 of the original text of 1883. Although it is not expressly included in the Spanish Trademark Law, it can be inferred from the absolute prohibitions on registration (Article 11), which are exhaustive. They do not contain any possibility of exclusion on account of the nature of the goods or services. Lastly, in Spain, trademarks are granted for all goods and services of the international nomenclature established under the Nice Agreement of 15 June 1957.

This is a repetition of the previous question; please refer to the reply.

(a) Designs may be protected by: industrial design, industrially-applied artistic design (resulting from a work of applied arts), utility design or copyright. Industrial and artistic designs are regulated by the Industrial Property Charter (amended version of the Royal Decree law of 26 July 1929); utility designs are regulated by the Patent Law, No. 11/1986, of 20 March 1986; and protection by copyright is set out in Royal Legislative Decree 1/1996, of 12 April 1996, adopting the amended text of the Intellectual Property Act. Protection by industrial design or by artistic design can be accumulated with copyright protection, as is seen from Article 3.2 of the amended text of the Intellectual Property Act. Protection by industrial design or by artistic design is not compatible with protection by utility design, pursuant to Article 169 of the Industrial Property Charter. (b) The requirement for protection of industrial designs is novelty. This is not examined ex officio in the procedure for granting the right (Article 166 of the Industrial Property Charter) but by the opposition procedure (Article 188 of the Industrial Property Charter). While the rules do not establish any parameter for assessing a novelty, administrative and judicial practice require worldwide novelty. The procedure follows, mutatis mutandis, that for trademarks (pursuant to Article 185 of the Industrial Property Charter), in the light of the specific rules (Article 170 of the Industrial Property Charter). As far as artistic designs are concerned, the procedure involves some special features, such as, for example, the requirement that the application for registration should be accompanied by the author's authorization when the artistic work is not considered as falling within the public domain (Article 191 of the Industrial Property Charter). (c)The rights are exclusive, for a term of ten years renewable for a further ten (Article 185 of the Industrial Property Charter). (d) Registration grants exclusive rights under terms similar to those established in Article 26.1 of the TRIPS Agreement. Judicial protection of industrial and artistic designs is covered by Title XIII of the Patent Law, No. 11/1986, as established in Waiver Provision 1(a) of the Law. The right remains effective on payment of fees under conditions identical to those for trademarks. Use of the design is not required in order for the right to remain effective, for this would be contrary to Article 5B of the Paris Convention. (e) Industrial designs are not eligible for registration if they are covered by the prohibitions on registration of applicable marks (forms imposed for reasons of a technical nature; contrary to the law; public order or morality; forms reproducing or imitating the shield, flag, etc. of States; etc. (Article 187 of the Industrial Property Charter)). The same Article establishes that packaging or models containing designs constituting trademarks or names are not eligible for registration.

Textile designs are protected in the same way as designs applied for in other industrial sectors. The procedure is rapid, since there is no ex officio substantive examination.

Yes. According to the Decree amending Section 17 of the Finnish Trademarks Decree, which was issued on 22 December 1995 and entered into force on 1 January 1996, the six months priority time is accepted to all applications first filed in a member of the Paris Convention or a Member of the WTO.

In Finland industrial designs are, as a general rule, protected by registration according to the Registered Designs Act (No. 221/71, as subsequently amended). The protection of the design may also be based on the Copyright Act, provided that the work fulfills a certain level of originality, or by the Trademarks Act, provided that the work can be distinguished from those of others (see answer to US question 1 above). Other possible forms of protection in certain situations are utility model law (novelty, inventive step, clear distinctiveness), patent law (novelty, inventive step, industrial applicability, clear distinctiveness) and rules on unfair competition. These forms of protection are not mutually exclusive. There are no particular provisions concerning textile designs in the Finnish Registered Designs Act. The same rules that are applied to other designs, apply also to the protection of textile designs. The average period for the examination of an application for registration of a design is ten months. Concerning the fees collected by the registration authority, as an example may be presented that for the first five years the basic registration fee is FIM 780, which, added by the publication fee (2 x FIM 180), means FIM 228 a year.

The concept of assigning includes also selling.

Article 7 of the Registered Designs Act states, that it may be provided by a decree that spare parts and accessories for aircraft, regardless of the protection of designs, may be imported to Finland for the repair of aircraft belonging to a foreign country in which corresponding benefits are accorded to Finnish aircraft. Such decree has not been passed and the Article has become a dead letter.

The Finnish Registered Designs Act provides for the protection for five years from the date of application of registration. The registration may be renewed for two additional five-year periods. Consequently, the maximum term of protection is 15 years. The request for renewal may be made a year before the termination of the registration as well as until six months after the termination. The renewal process is very simple. The registration authority controls that the renewal fee and other possible fees have been paid and makes the necessary indications to the register (concerning the renewal, owner of the design or the attorney), after which the renewal decision is filed to the owner of the design. No novelty examination is done during the renewal process.

Article 1.2 of the Finnish Trademarks Act contains the general definition of a trademark. According to it, a trademark may be any kind of mark that can be represented graphically and by means of which goods marketed in business can be distinguished from those of others. Following the definition the Article sets forth a list of examples of what a trademark in particular may consist of (words, figures, letters, numerals or the shape of goods or of their package). Graphic representation is a very wide concept. It may include, for example, musical jingles, slogans or colours. This is explicitly stated in the preparatory documents of the Bill No. 39 of 25 January 1993, whereby the Article was amended in preparation for the European Economic Area (EEA). This means, that under Finland's trademark law colour marks are capable of constituting a registrable trademark, provided that they fulfill the requirements of distinctiveness.

According to Article 7 of the Paris Convention, which Finland is a member of, "the quality of the good" may not serve as an obstacle for the registration of a trademark. Although Finnish trademark law does not contain an analogous provision, Finland is obliged by the Paris Convention to take notice of the above-mentioned provision. The Finnish Trademarks Act does not contain provisions under which the nature of the goods or services could serve as an obstacle to the registration of the mark.

The preparatory documents relating to Article 26 of the Finnish Trademarks Act (the Bill mentioned in the answer to US question 1 above) do not specify the situations in which the holder of a trademark may invoke proper reasons for the non-use of the trademark. It remains thus for the court to ultimately define the concept of "proper reasons". There are at present no administrative or judicial decisions addressing the issue. The general principle, however, is that situations which occur independently of the holder's will or ability, such as war or other crisis, import or export restrictions, or a pending administrative decision, e.g. a marketing licence for a pharmaceutical or chemical product, may form such reasons.

According to Article 6.2 of the Finnish Trademarks Act, the confusability of symbols can be referred to in favour of such symbol which has a reputation in this country, if the use of a symbol of another without due cause would mean taking unfair advantage of, or being detrimental to the distinctive character or the reputation of the earlier mark. Usually the owner of the well-known mark reacts to this kind of unfair practice, for example in the form of opposition.

Article 10 of the Finnish Trademarks Act refers to cases where the user of a trademark has neglected his possibility to prevent another party within a reasonable time from using a confusable mark. In those situations, the rights may continue to co-exist. However, for consumers to be able to identify and distinguish between products, some kind of clarification may be requested to be added to the mark. This provision serves the interest of the right-owners and is not a requirement which unjustifiably encumbers the use of a trademark.

According to Article 14.1, point 6, a mark may not be registered if it is liable to be confused with an identical mark of another, which was already registered for identical goods at the time when registration is sought. The provision in itself establishes a presumption of likelihood of confusion, although it is not explicitly stated in it.

Yes, where a registered trademark is used on the identical goods for which it is registered by someone other than the registrant or its licensee, the Finnish courts do impose a presumption of confusion that must be overcome by the user.

Protection of geographical indications in Finland is based on the implementation of the Regulation on the protection of geographical indications and designations of origin (EEC No. 2081/92) and the supplementary provisions to it. The Ministry of Agriculture and Forestry has, by virtue of the Act on implementation of the common agricultural policy of the EC (No. 1100/94), given out a Decision on the minimum protection of agricultural products and foodstuffs (No. 933/95), as well as a Decision on certificates concerning special character of agricultural products and foodstuffs (No. 934/1995) (the translations of the titles of the enactments are unofficial).