Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Providing a power of attorney is not required if the agent is an attorney at law or another IP adviser (including patent and trademark attorneys) who fulfils one of the below-mentioned criteria:
- is employed by a firm which for the preceding three years has represented applicants and owners with applications and maintenance of patents, trademarks, designs and utility models;
- declares that he or she is on European Patent Office or the EU Intellectual Property Office lists of professional representatives;
- declares that he or she has worked with IP rights and acted as an agent on behalf of applicants or owners in relation to applications or maintenance of patents, trademarks, designs or utility models for three consecutive years before the submission of the application; or
- refers to a previously submitted general power of attorney.
Other agents that do not fulfil the abovementioned requirements must submit a power of attorney with the application. Notarisation or legalisation is not required.
What information and documentation must be submitted in a trademark registration application?
The following must be included:
- the name and address of the applicant (or agent, if applicable);
- a representation of the mark;
- specification of the goods and services;
- a power of attorney (if applicable); and
- the priority claim (if applicable).
What rules govern the representation of the mark in the application?
The practices of the courts and the Patent and Trademark Office govern the representation of the mark in the application. The representation of the mark must be clear and represented graphically. The details depend on the form of the trademark.
Marks merely consisting of words or numbers may be represented graphically in writing, whereas an image file must be submitted for marks consisting of graphical devices and three-dimensional shapes. Sound marks must show musical notations and sound sequences, while motion trademarks must show numbered image sequences.
In practice, scent and taste marks cannot be sufficiently represented by way of the technical means currently available.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The application fee is Dkr2,350 for up to three classes, with an extra fee of Dkr600 for each additional class.
How are priority rights claimed?
Priority may be claimed when completing the application form. The applicant may claim priority from an earlier application or registration in another member state of the Paris Convention, World Trademark Organisation, European Union or a state which has a bilateral agreement with Denmark. Priority may be claimed only within six months of the application date for the filing of the trademark.
When applying for conventional priority, the applicant must state:
- the priority application date;
- the priority application number;
- the priority application country; and
- which goods in the Danish application are covered by the priority claim.
Further, the applicant may claim priority from the date that a trademark has been used for the first time for goods displayed at an official or officially recognised international exhibition if the application is filed no later than six months after such use. When applying for exhibition priority, the applicant must state:
- the priority application date;
- the priority exhibition name and country; and
- which goods in the Danish application are covered by the priority claim.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches conducted by the Patent and Trademark Office are not required before filing; however, they are available. The cost depends on the classes included and will be based on search time.
The Patent and Trademark Office provides a searchable database on its website, which is available to the public free of charge.
What factors does the authority consider in its examination of the application?
The Patent and Trademark Office examines the following factors:
- formal requirements;
- the classification of goods and services;
- whether the mark has distinctiveness;
- whether the mark is deceptive;
- whether the mark violates other laws, public order or morals;
- whether the mark includes a coat of arms or a national flag;
- whether the mark is confusingly similar to prior trademark rights in the trademark database;
- whether the company register contains trade names which are identical or almost identical to the mark; and
- whether the mark infringes another person's copyrights.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes. The Patent and Trademark Office checks for relative grounds for refusal and provides the applicant with a search report. The report is merely for information purposes as registration is not refused on relative grounds. However, the search report may prompt the applicant to withdraw the application or amend the classification of goods and services for which it wishes to register the mark.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes. The Patent and Trademark Office allows the applicant to rectify the application within two or four months and it is usually explained in a letter what will happen if the applicant fails to remedy the deficiency by the set deadline. Extension of a deadline is normally granted only once and a request for an extension must be well founded. However, an applicant may be allowed several rounds of written submissions to rectify the application and overcome objections.
Can rejected applications be appealed? If so, what procedures apply?
Yes. Rejected applications may be appealed to the Board of Appeals for Patents and Trademarks within two months from the decision. The fee for an appeal is Dkr4,000. The appeal procedure is conducted in writing. After the appellant has filed the notice of appeal, the Board of Appeal obtains the Patent and Trademark Office’s re-assessment on the case. The appellant then has one month in which to respond by submitting further written comments. In certain cases, an oral hearing of the case may be allowed if requested by the parties. The appeal has suspensive effect.
The decision of the Board of Appeal may be brought before the ordinary courts.
When does a trademark registration formally come into effect?
If the application meets all the requirements, the Patent and Trademark Office will register the trademark and publish a notice of the registration in the Trademark Journal. An opposition period runs for two months from the date of publication. If no oppositions are filed, the trademark will become effective from the date that the application was filed. In case of oppositions, the trademark will not become effective until such opposition proceedings have been concluded.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years from the date of registration. Registration may be renewed for further 10-year periods from the expiry of the registration period. The renewal becomes effective when the renewal fee is paid. The fee may be paid from six months before the expiry date and until six months after the expiry date.
The renewal fee is Dkr2,350 for three classes, with an extra fee of Dkr600 for each additional class. Payment after the expiry date will incur an additional 20% fee.
What registration fees apply?
No registration fees apply.
What is the usual timeframe from filing to registration?
Approximately four to six months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes. Once notice of the trademark registration is published in the Trademark Journal, third parties may oppose the registration within a two-month opposition period. Oppositions must be filed with the Patent and Trademark Office and must specify the grounds on which it is filed. The trademark registration owner will get an opportunity to file a reply statement to the opposition, after which the Patent and Trademark Office will decide if further statements from the parties are needed. The number of statements may differ depending on the complexity of the matter. The Patent and Trademark Office's decision in opposition proceedings may be:
- to reject the opposition that a disclaimer be added to the mark or that the list of goods and services of the mark be reduced so that the marks may coexist; or
- to delete the opposed mark from the register in full.
Any third party may oppose a registration on the absolute grounds that the trademark:
- lacks distinctive character;
- consists exclusively of signs which may serve to designate the type, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of rendering the services or other characteristics of the goods or services;
- consists exclusively of signs which are customary in the current language or established practices of trade to designate the goods or services;
- violates the law, public order or morality;
- may deceive the public as to the nature, quality or geographical origin of the goods or services; or
- has not been authorised by the competent authorities in accordance with the Paris Convention or includes badges, emblems or escutcheons of public interest, unless the appropriate authority has given its consent to their registration.
Only third parties that own or hold a prior right may oppose the registration of a trademark on the relative grounds that the trademark:
- is identical to an earlier mark for identical goods or services;
- is identical or similar to an earlier mark for identical or similar goods or services if a likelihood of confusion exists, including the likelihood of association between the trademark registration subject to the opposition and the earlier mark;
- is identical or similar to an earlier mark which is well known and the trademark registration subject to the opposition would take unfair advantage of or without due cause be detrimental to the distinctive character or reputation of the earlier well-known mark;
- may be construed as a symbol that, at the time of the application, was being used by a third party in Denmark or abroad and is still in use, if the applicant was acting in bad faith at the time of the application;
- may be construed as another party’s company name;
- may be construed as a personal name to which another party has a legal title, or which without permission contains a distinctive name of or a picture of the real property of another party;
- may be construed as a portrait of someone who is not long deceased; or
- may be construed as a distinctive title, a protected literary or artistic work of another party or which infringes the copyright in such a work or the right to a photograph of another party or the industrial property rights of another party.
What is the usual timeframe for opposition proceedings?
Approximately 12 to 18 months.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes. Opposition decisions may be appealed to the Board of Appeals for Patents and Trademarks within two months from the decision. The fee for an appeal is Dkr4,000. The appeal procedure is conducted in writing. Each party submits one pleading, after which the Board of Appeals obtains the Patent and Trademark Office’s opinion on the case. The parties then have one month to respond by submitting further written comments. In certain cases, an oral hearing of the case may be allowed if requested by the parties. The appeal has suspensive effect.
The decision of the Board of Appeals may be brought before the ordinary courts.
Click here to view the full article.