New Swedish IP Legislations

Authors: Nadim Malovic, Christopher Tehrani

New Legislation Entering into Force in 2019

1 January 2019 is an important date as several new IP legislations have been implemented in Sweden. In particular, a new Trade Mark Act entered into force together with a new act on Geographical Indications, the previous Trade Names Act has also been replaced by a new Act on Company Names.

The following blog post aims to briefly summarize some of the recent changes.

A new act on Trade Marks

The purpose of the new Trade Mark Act is to approximate the Swedish national trade mark legislation to the trade mark law in other EU countries, as well as to transpose the EU Trade Mark Directive into domestic law. Herewith are some relevant changes brought with the new Trade Mark Act:

• The previous requirement of graphic representation has been removed, rendering the new Trade Mark Act technologically neutral. This means, for instance, that an audio mark will be eligible for trade mark registration.

• The date from which a trade mark registration is valid has changed. The date of filing the application – as opposed to registration date – will now be applicable to new applications. This means that successfully registered trade marks will be valid for at least 10 years as of the date of filing the application. In order to obtain registration as of the filing date, certain formal requirements must be fulfilled. However, these requirements are not as far-reaching as the requirements imposed on the final trade mark application. For example, the list of goods and services need not be construed in light of the Nice Classification. It will also be the responsibility of the Swedish Patents and Registration Office to set the filing date of the application which will neither be subject to appeal.

• In order for the Trade Mark Act to fully comply with the EU Trade Mark Directive, an opportunity has been introduced for the parties to – in connection with the opposition procedure – request a deadline until which they have the possibility to reach a solution.

• The Trade Mark Act imposes new requirements for use of a trade mark, against the fact that a rights- holder should not be able to rely on his trade mark as the basis for an objection, a cancellation procedure, or an infringement, if the trade mark is not used.

• The scope of protection of trade marks is also extended through the new Act. In particular, without the infringing goods being placed on the internal market, the Swedish customs will be able to seize the allegedly infringing goods passing the country (so-called transiting) in order to prohibit loss of sales for the rightsholder.

A new act on Company Names

The Swedish legislator has also transposed certain provisions in the preceding Trade Mark Directive to company trade names through the Act on Trade Names (Sw: Firmalagen). Similar to trade mark protection, company trade names currently enjoy protection by either registration or acquired distinctiveness. Furthermore, the exclusive right of a registered company name means that no one other than the registered holder may use the trade name or a confusingly similar trade name. Registration of a company trade name is sought with the Swedish Companies Registration Office.

The Act on Trade Names has also been amended through the EU Trade Mark Directive. One change brought with the new EU Trade Mark Directive is that the Act on Trade Names has now been re-named to Act on Company Names. Under the now applicable Act on Company Names, the term “trade name” has been replaced by “company name”.

The language of the Act has also been modernized, making it easier for businesses to comprehend the provisions of the legislation. The aim of the legislator was that the change in language would simplify the understanding of company registration for individual entrepreneurs, incentivize a correct application of relevant legislation, and make it more cost efficient to register company names.

Furthermore, under the previous domestic law regime, the exclusive rights granted to a trade mark holder also entails cross-protection of the subject matter of protection. This means that cross-protection extends the exclusive rights granted – by a trade mark – to trade names. In other words, cross-protection grants the trade mark holder the exclusive right to prevent third parties from using the mark as a trade name. The previous domestic law regime is preserved through the new Company Names Act and will still grant the trade mark holder cross-protection of the subject matter of protection, albeit within the scope of company names.

A new act on the Protection of Designations of Agricultural Products and Foodstuffs

A new act on the Protection of Designations of Agricultural Products and Foodstuffs was also implemented as of 1 January 2019. In this new Act, provisions relating to sanctions for infringement of geographical indications relating to agricultural products and foodstuffs are recognised and collated under the same statutory footing. This means that all sanctions relating to such infringements are found under this new act. This is made possible by transposing existing rules – relating to agricultural designations protected by EU Regulations and international agreements –to the new act on the Protection of Designations of Agricultural Products and Foodstuffs. The Patent and Market Court will be the competent court to judge over such disputes.