Sweden jurisdiction report: An annual ‘fridge check’ for IP

One of the Swedish main food stores just after new year 2020 initiated a new environmentally friendly service: take a picture of the food you have in your fridge, and we will send you back a recipe of what you can make for dinner.

The same kind of service is needed for all IP owners. When you do your annual internal IP due diligence, checking out your IP portfolio in order to decide what to do with existing patents, trademarks and other registered rights the upcoming year, the first and most important advice is: do not throw it away as garbage.

When it comes to patents, it is well known that 1) many inventors do not have enough budget to use and take advantage of their rights; but that 2) licence agreements, cooperation, or even selling the IP rights can give the inventors the possibility to stay in business and continue to create new and useful technologies. 

Such deals also open the door for others that have practical, functional and economically fruitful business ideas, but no access to the right technical (patented) rights.

In Sweden, we have seen many examples of young software inventors whose work is welcomed by global companies that often need that “little technical detail” to be added to their own more complicated solutions. There are also examples of cases where the buyer is willing to pay for your rights, just to make sure that you will not compete with their technology.

Fair, reasonably priced, and non-discriminatory (FRAND) licensing agreements are another option to expand your ideas to other users. Patent protection will give the holder the exclusive right for a limited period, while providing the basis for the development of new technologies among other market players. 

However, patent protection is not free of charge. FRAND is therefore an opportunity to make it easier to develop global standards to keep the price down for the final customer and to open opportunities for new technology. 

The Swedish company Ericsson is well known for being in the forefront of developing and promoting FRAND, having signed over 100 licensing agreements to assist other companies in bringing new and innovative products and services to the market, thereby opening up new services and products for the end users. 

As Ericsson states on its website: “Our objective is to allow the world to benefit from our cutting-edge innovations, constantly pushing the curve of what the industry can do.”

Trademarks

Trademarks are different. It is important to bear in mind that you need to use the trademark within five years from registration, otherwise you risk that a third party will try to cancel the registration.

The good thing is that you can at least keep a broader description for the five-year period, before you finally decide exactly how to use it. If you have not used the mark for everything, before you make limitations, perform a market search to see if anyone else has tried to register something similar, or at least with the same “idea”, and had problems. Selling the rights to some goods or services of your existing valid registration can be the solution.

Are you planning a completely new product, but cannot find a perfect trademark for that? No problem, dig into your existing trademark portfolio and see what you can find. 

Nokia, the well-known trademark for mobile phones, originates from 1871 when the Finnish-Swede mining engineer Fredrik Idestam established a pulp mill for paper on the banks of the Nokianvirta river. The goods and services have been developed and changed over the time (including rubber goods such as galoshes) but the same trademark has been used for nearly 150 years, independently of the goods.

Saab, the Swedish aircraft company is another example. When Saab founded a new company for automobiles in 1945, the same trademark was used, and marketing took advantage of the already well-known aircraft part of the trademark, advertising the new car as a “Swedish car with flight quality”.

Although Sweden is one of the world’s most innovative countries, do not forget annually to “clean the fridge” and see how you and others can take benefit from your existing IP rights.  

Maria Zamkova is chief executive officer of Fenix Legal. She can be contacted at: info@fenixlegal.eu