New Trademark Act comes into force

On July 1 2011 the new Trademark Act (2010:1877) came into force, replacing the old Trademark Act (1960:44) and the Collective Marks Act (1960:45). As over 50 years had passed since the old act was drafted, there was a great need to modernise the law. Therefore, when the Swedish Committee on Trademarks proposed the implementation of a new act at the beginning of the 2000s, it was met with great expectations.

The main features of the new act include the following:
  • A new procedure making it easier to cancel and annul registrations on the grounds of non-use has been introduced (administrative revocation). Previously, in order to start a revocation procedure after the expiry of the opposition period, the applicant had to initiate court proceedings. Under the new act, it is possible to apply directly to the Swedish Patent and Registration Office (PRV). This is expected to quicken the process and reduce the legal costs involved in revocation actions.
  • The PRV is now able to reject an application in part. Previously, the PRV had to reject the application in its entirety if there was any obstacle to the registration of some of the goods or services applied for.
  • The period for lodging objections has been extended from two to three months, in line with the opposition period before the Office for Harmonisation in the Internal Market (OHIM). It will also be easier and faster for the PRV to decide on oppositions which are apparently unfounded or have serious flaws.
  • It is now possible to transfer an application to a third party if it has better rights.
  • The PRV will still dismiss an application if the applicant does not reply within the time limit stated in the PRV's notice. However, if an application is dismissed, the new act introduces the possibility of having the application reinstated for a minor fee.
  • It is now possible to request secrecy in trademark matters involving specific documents pertaining to confidential business information or operating conditions.
  • Pursuant to Article 15(2) of the EU Trademarks Directive (2008/95/EC), the new act allows the registration of marks designating the geographical origin of goods or services that constitute collective, guarantee or certification marks, a possibility which was not available under the previous law.
However, contrary to what was initially proposed, the official review of prior rights remains. Contrary to the procedure before OHIM and in several European countries, where trademark applications are examined only on absolute grounds, the PRV also carries out examinations on relative grounds. This issue was by far the most debated during the drafting of the new act. The government initially raised the possibility of abolishing the practice of examination on relative grounds in order to make the application process more effective. However, it eventually decided against it, arguing that it would benefit small and medium-sized companies, since they would not have to perform IP audits before applying for registration and would be provided with greater certainty in opposition and court proceedings.

Despite this, the current system results in national applications being frequently rejected and, consequently, small or medium-sized Swedish companies tend to apply for Community trademarks, rather than national trademarks.

Previous registrations will not be affected by the new act. The new provisions, including those on administrative revocation, cover all trademarks, even those registered under the old act.

In summary, the new act does not bring any significant changes. The changes primary concern the registration and administrative procedures, and the most controversial issue (ie, the official review of prior rights) has been left unaltered. Consequently, the reform has been met with disappointment by various users. Nevertheless, the new act should be welcomed, as it presents the law in a clearer way. On an international level, the new act represents a step forward, as it brings Swedish law into line with the Singapore Treaty on the Law of Trademarks.
Tom Kronhöffer and Måns Sjöstrand, von lode advokat ab, Stockholm 

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