Specialized IP court one step closer to reality

Finland
The working group on the centralization of IP matters has handed down its report, which is now available on the website of the Ministry of Justice (Consultation Document 28/2010).

Currently, the decision-making process in IP matters is scattered among various authorities and courts, which renders the system complicated, slow and unpredictable. For example, trademark examinations and oppositions are processed by the National Board of Patents and Registration of Finland (NBPR) and its Board of Appeal. A further appeal may be filed before the Supreme Administrative Court. In contrast, trademark cancellation proceedings and infringement cases are decided by the general courts (ie, the district courts, the Court of Appeal and the Supreme Court).

In order to simplify and rationalize the handling of IP matters, in March 2009 the Finnish Council of State accepted in principle that all disputes relating to IP rights should be centralized by 2012. The Ministry of Justice then appointed a working group to plan the project in more detail and propose necessary changes to the legislation.

The reform aims mainly to:
  • reduce the length of IP-related proceedings; and
  • improve the quality of the decisions.
Additionally, it is hoped that all aspects of an IP dispute (eg, a claim for infringement and a claim for damages) can be resolved in one proceeding.

According to the working group's proposal, the main tribunal for IP matters will be the Market Court. Currently, the Market Court specializes in cases relating to market law, competition and public procurement. If all IP matters are centralized in the Market Court as planned, the workload of the court will double, with approximately 300 new cases per year.

Under the proposal, the Market Court will be competent to hear matters involving any kind of IP rights - that is, trademarks, patents, designs and utility models, as well as trade names, domain names and copyright. However, the court will not replace the registration authorities (eg, the NBPR, which grants trademark registrations, and the Finnish Communications Regulatory Authority, which issues '.fi' domain names). Instead, the court will hear:
  • appeals from decisions of these authorities; and
  • IP disputes, including requests for precautionary measures.
Therefore, in the future, decisions of the NBPR will be appealed to the Market Court, instead of the Board of Appeal of the NBPR. The Board of Appeal will be dismantled once it has handled all pending matters. If the project goes ahead, the Market Court and the Board of Appeal will thus work in parallel for a few years, as there is currently a backlog at the board. It is estimated that the backlog will not be cleared before 2014.

The working group also made suggestions concerning procedural issues. According to the proposal, the Market Court will consist of three judges. However, in cases involving patents, utility models and circuit designs, there will be additional judges with technical knowledge.

The working group's proposal is to be welcomed. However, it will be a long time before the benefits of the reform can be felt, as the  implementation of the proposed changes will require significant financial resources.

Johanna Kauhanen, Benjon Oy, Helsinki

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