On November 9, a report was published by the 2015 Trademark Committee, SOU 2016:79. The report includes a proposal for amendments of the Trademark and Design act. Moreover there is a bill for a new Tradenames Act. In addition a new act on protection on names of agricultural products is suggested.
The changes of the Trademark Act follows broadly the changed required to comply with the EU Trademark Directive, we refer to our previous reporting’s on this issue. Several of the changes are to adjust the Swedish Trademark Act with the EU Trademark Regulation and to incorporate practice of the Court of Justice of the European Union into the proposed Act. One important change is the abolition of the requirement of a graphical representation of the trademark in an application to a requirement that the trademark should be clearly represented in the trademark records. Another change is that the sole right to a trademark may be invoked also in relation to goods in transit or other customs measures.
As we have reported earlier, there will be introduced a rule according to which an applicant may require an opponent to show use that meet the user requirements. Moreover, there will be a cooling-off period, as at EUIPO, and that oppositions may only be based on relative grounds, i.e. earlier rights. However, the Swedish PTO will still examine ex officio both relative and absolute grounds, even if the EUIPO and many offices in the EU does not examines as to relative grounds in an application. These are only raised in oppositions or cancellations.
Also in cancellation action, it will be possible for the holder to request from the cancellation applicant proof of genuine use. A decision on cancellation of a trademark will have affect back in time, as a general principle.
The Tradenames Act is more basically changed, for instance the Swedish word “firma” is changed to “företagsnamn” to modernize the language. The new Tradenames Act has the trademarks act as model. One change that may have larger impact is the rule that if a company or business changes its line of business, there should be carried out a new examination whether the tradename is not in conflict with prior rights. Thus, one cannot more assume that even though you have had your tradename for many years, that this is available for an extended or changed line of business. This should be checked in advance.
The report is now been referred for consideration and BRANN will follow the further legislative work. We will report on developments of the referral. For any questions please contact Astrid Johnsson, partner and attorney-at-law.