Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The Trademarks Act (2010:1877) and the Trademarks Regulation (2011:594) are the primary legislation governing trademarks in Sweden. Sweden is also an EU member state and has implemented the Trademark Directive (EEC) 89/104.

International law

Which international trademark agreements has your jurisdiction signed?

Sweden is a party to the following international trademark agreements:

  • the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks;
  • the Paris Convention for the Protection of Industrial Property;
  • the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  • the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks;
  • the Singapore Treaty on the Law of Trademarks; and
  • the Trademark Law Treaty.
Regulators

Which government bodies regulate trademark law?

In Sweden, legislative power is vested in parliament. The Patent and Registration Office is the government authority for IP and is responsible for the registration of Swedish trademarks, patents and designs.

Registration and use

Ownership of marks

Who may apply for registration?

Individuals or legal entities can register Swedish trademarks.

Scope of trademark

What may and may not be protected and registered as a trademark?

A trademark can be any sign - including words, personal names, devices, letters, numerals, colours, sounds or the shape of goods or its packaging - with distinctive character and that can be represented in the Trademark Register. A mark can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. It is possible to register collective or certification marks.

Unregistered trademarks

Can trademark rights be established without registration?

Yes. An unregistered trademark is protected if it is known by a significant part of the relevant public in Sweden (generally around 30 per cent) as a sign for the goods or services that are being offered thereunder. To establish this, information concerning the time during which the mark has been used in trade, details of revenue and number of products or services sold under the mark, marketing investments and market surveys are typically required.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Under the Trademarks Act, a trademark may not be registered if it can be confused with a trademark that is used in Sweden or abroad and the applicant was in bad faith when filing the application to register the trademark. Proof of actual use and bad faith of the applicant is required. An exclusive right may be also acquired by famous foreign trademarks without registration by means of establishment on the market. An unregistered mark is protected if it is known by a significant part of the relevant public in Sweden (generally around 30 per cent) as a sign for the goods or services that are being offered thereunder.

The benefits of registration

What are the benefits of registration?

In the event of court proceedings, the holder of a trademark acquired by means of establishment on the market has the burden of proof for showing that it is known by a significant part of the relevant public in Sweden (generally around 30 per cent) as a sign for the goods or services that are being offered thereunder. This requirement does not apply to a holder of a registered trademark.

Further, only holders of registered trademarks are entitled to submit applications requesting the customs authorities to take action with respect to goods suspected of infringing the IP right.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

No documentation aside from the complete application itself is needed and electronic filing is available.

There are no specific rules that govern the representation of the mark in the application except that the representation, in whatever form, must be clear. In addition to graphical representation, the Patent and Registration Office accepts representations in the form of sound files, moving pictures and multimedia files.

It is not required but the Patent and Registration Office offers pre-file searches for 2,400 Swedish kronor or by quotation if there is a need to examine more than 5,000 search results. Express delivery within 48 hours is available for an additional fee of 4,000 Swedish kronor. The search covers:

  • national applications and registrations in the Swedish Trademark Database;
  • international trademark applications relating to and designating Sweden;
  • EU trademarks;
  • the Confederation of Swedish Enterprise register;
  • the name and surname registry;
  • religious communities and registered newspaper titles and municipal coats of arms;
  • official designations; and
  • heraldic arms.

Further, the search includes a broad and common internet check to see if there are any unregistered rights or other circumstances that may be relevant and an assessment of whether the mark is distinctive or if it contains characteristics that can hinder the mark from being registered.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The usual time frame from filing to registration is approximately three to six months.

Electronic filing costs 2,000 Swedish kronor for the first class and 1,000 Swedish kronor for each additional class. An additional fee of 700 Swedish kronor is payable if the electronically filed application includes goods or services that have not been chosen from the list of pre-validated terms offered by the Patent and Registration Office. Non-electronic applications cost 2,700 Swedish kronor for the first class and 1,000 Swedish kronor for each additional class.

Circumstances that would typically increase the estimated time and cost of filing a trademark application and receiving a registration is if:

  • the Patent and Registration Office finds that the application does not meet all requirements (which includes an examination of both formal requirements and whether there are any absolute or relative grounds for refusal); or
  • a third party opposes the registration, wholly or partly, within three months from the date of publication of the trademark registration in the Trademark Journal.

If the Patent and Registration Office finds that the application meets all of the requirements, the trademark will be registered and a notice of the registration will be published in the Trademark Journal. If no oppositions are filed, the trademark will become effective from the date the application was filed.

Assuming that no oppositions are filed the average cost for registering a trademark in a single class is around 10,000 to 15,000 Swedish kronor.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The Nice Classification system is followed.

Multi-class applications are allowed. The cost of filing is 1,000 Swedish kronor for each additional class. An additional fee of 700 Swedish kronor is payable if an electronically filed application includes goods or services that have not been chosen from the list of pre-validated terms offered by the Patent and Registration Office.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The Patent and Registration Office examines whether:

  • the application meets the formalities (ie, if it contains all required information); and
  • there are any absolute or relative grounds for refusal, including if the mark lacks distinctiveness or can be confused with an earlier right.

The Patent and Registration Office conducts searches in order to ascertain whether a trademark is confusingly similar to, for example, Swedish trademarks, EU trademarks, Swedish company names and distinctive surnames.

Letters of consent from third-party rights holders are generally accepted.

The Patent and Registration Office will ask the applicant to rectify the deficiencies or file a statement within a specified period if the application fails to meet the formal requirements or the Patent and Registration Office raises any objections. For example, if objections have been raised owing to a likelihood of confusion with an earlier trademark, a statement might include proof that the applicant has received consent from the holder of an earlier trademark.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

A trademark registration may be granted without prior use.

An applicant must claim priority before the trademark is registered and indicate the time, place, applicant and application number of the priority application. The Patent and Registration Office may direct the applicant to prove its right to claim priority.

A trademark registration may be wholly or partially cancelled if the owner has not - within five years from the final decision on the registration matter or a consecutive five-year period - made genuine use of the mark in Sweden in respect of the goods or services for which it was registered and the owner has no valid reasons for non-use.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The ™ symbol is used to show that, for example, a word or logotype is used as a mark for the company in question. The ® symbol is used to show that a trademark is registered. However, neither the ™ nor the ® symbol has any direct legal significance in Sweden. Use of the ® symbol may be a violation of the Marketing Practices Act if the trademark does not enjoy trademark protection by registration in Sweden. However, in infringement cases it may be possible to claim that the infringement has been negligent if it is clear that the trademark is registered, which have certain implications for calculation of damages.

Appealing a denied application

Is there an appeal process if the application is denied?

The Patent and Registration Office will ask the applicant to rectify the deficiencies or file a statement within a specified period if the application fails to meet the formal requirements or the Patent and Registration Office raises any objections. For example, if objections have been raised due to a likelihood of confusion with an earlier trademark, a statement might include proof that the applicant has received consent from the earlier trademark’s owner. If the applicant fails to respond in due time, the application may be rejected, which rejection will be public in the Patent and Registration Office’s files.

A rejected application can be appealed to the Patent and Market Court within two months from the decision. Appeals are sent to and examined by the Patent and Registration Office. If the office does not reconsider its decision following such an examination, it will forward the appeal to the Patent and Market Court. Patent and Market Court decisions may be appealed to the Patent and Market Court of Appeal. Leave to appeal is required. Decisions of the Patent and Market Court of Appeal may be appealed to the Supreme Court only if the Patent and Market Court of Appeal grants a right to appeal, and leave to appeal is granted by the Supreme Court.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

If the Patent and Registration Office finds that the application meets all requirements, the trademark will be registered and a notice of the registration will be published in the Trademark Journal. Once notice of the trademark registration is published in the Trademark Journal, third parties may oppose the registration wholly or partly. An opposition specifying on which grounds it is filed must be filed with the Patent and Registration Office within three months from the date of publication. The trademark owner and the opposing party can then file statements arguing their case before the Patent and Registration Office (the number of statements vary and there is no set number). Following the exchange of statements, the Patent and Registration Office decides whether to revoke the registration as a result of the opposition. The trademark owner and the opposing party may jointly request a cooling-off period. The Patent and Registration Office shall determine the length thereof, which must be at least two months. It may be extended at the parties’ request.

Any third party may oppose a registration on the grounds that the trademark:

  • lacks distinctiveness;
  • consists exclusively of a shape or another characteristic that results from the nature of the goods, is necessary to obtain a technical result or gives substantial value to the goods;
  • is contrary to law, regulations, principles of morality or public policy;
  • could deceive the public concerning the nature, quality, geographical origin or any other circumstance relating to the goods or services;
  • includes, without permission:
    • a state or international emblem or a municipal coat of arms which, under law or regulations, cannot be used as a trademark without authorisation, or something that can easily be confused with such an emblem or municipal coat of arms;
    • a mark which, under the Act on Protection for Marks in International Humanitarian Law (2014:812), cannot be used as a trademark without authorisation, or something that can be confused with such a mark;
  • contains a designation of origin, a geographical indication, a traditional term for wine or traditional speciality guaranteed, to the extent that such indication is protected according to EU legislation;
  • contains or consists of any sign which could be conceived as a geographical indication for wines or spirits and that relates to wines or spirits of a different origin; or
  • consists of, or reproduce in their essential elements, an earlier plant variety denomination for plant varieties of the same or closely related species, to the extent such plant variety is protected according to the Swedish Act on the Protection of Plant Variety Rights (1997:306) or EU legislation.

Subject to an objection by the rights holder of the trademark registration, only third parties with a legitimate interest may oppose the registration on the 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 proprietor of the trademark registration subject to the opposition and the owner of the earlier mark;
  • is identical or similar to an earlier mark known by a significant part of the relevant public, and the use without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier mark;
  • can be confused with a mark that, at the time of application, was being used by a third party in Sweden or abroad and is still in use, if the applicant was acting in bad faith at the time of the application;
  • is likely to be perceived as another party’s company name;
  • is likely to be perceived as another party’s distinctive surname, a well-known artist’s name or similar if the use would cause a disadvantage for the bearer and the name does not obviously refer to someone who is long deceased;
  • is a picture of someone who is not obviously long deceased; or
  • infringes another rights holder’s copyright, photograph or design.

Opposition decisions can be appealed to the Patent and Market Court. The Patent and Market Court decisions may be appealed to the Patent and Market Court of Appeal. Leave to appeal is required. Decisions of the Patent and Market Court of Appeal may be appealed to the Supreme Court only if the Patent and Market Court of Appeal grants a right to appeal, and leave to appeal is granted by the Supreme Court.

Typical costs for a third-party opposition procedure before the Patent and Registration Office range between 40,000 Swedish kronor and 100,000 Swedish kronor. Cancellation procedures are harder to predict costs for.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The registration takes effect from the official filing date with the Patent and Registration Office and is valid for 10 years thereafter. The registration can be renewed for an unlimited number of consecutive 10-year periods. The renewal is accepted when the renewal fee is paid.

A trademark registration may be wholly or partially cancelled if the owner has not - within five years from the final decision on the registration matter or a consecutive five-year period - made genuine use of the mark in Sweden in respect of the goods or services for which it was registered and the owner has no valid reasons for non-use.

The trademark owner has the burden of proof for showing that there has been commercial use of the mark. Thus, the trademark owner must show that the trademark has been used for (eg, marketing or sale of the goods or services for which it was registered). The Patent and Registration office does not require any proof of use.

Surrender

What is the procedure for surrendering a trademark registration?

Trademark owners may choose not to renew a registration or request the Patent and Registration Office to remove, wholly or in part, a registration from the Trademark Register.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

There is no limitation against a trademark obtaining protection under other IP rights. A trademark can be protected under the Copyright Act (1960:729) as long as it fulfils the requirements for such protection. A trademark may also be protected under design legislation, including the Design Protection Act (1970:485), if it meets certain criteria with respect to, for example, novelty and originality.

Company names are protected under the Company Names Act (2018:1653), according to which, registered or established trade names enjoy protection against identical and confusingly similar trade names. Further, a bearer of a characteristic surname is protected under the Name Act (2016:1013) against third parties using his or her name as an indicator of trade origin if such use would be disadvantageous for the bearer of the name.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

There is no specific regulation for the online use of trademarks. To the extent applicable, the Trademarks Act also covers online use.

Swedish law does not specifically regulate the right to domain names. The Foundation for Internet Infrastructure is generally responsible for the registration of .se domain names. A trademark registered as a domain name by someone other than the trademark owner does not necessarily constitute a trademark infringement. Further, a trademark registration does not automatically entail a right to a domain name incorporating that mark.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence that pertains to a registered trademark shall be noted in the Trademark Register upon request. There are forms available on the Patent and Registration Office’s website.

Registering the licence does not affect the validity of the licence agreement, but there are certain benefits associated with a registration. The official notice of the registration means that the licence comes to the public’s knowledge. Moreover, the notice, and the agreement itself should it have been handed submitted to the Patent and Registration Office, may later serve as evidence if the licence is challenged.

Swedish trademark licence agreements typically include information on whether the licensee is awarded an exclusive licence. Quality and control provisions - including usage requirements - are common. The same goes for provisions governing the licensee’s right to sub-license and sub-contract its rights under the agreement. Further, provisions governing the parties’ responsibility with respect to third-party rights are typically included.

Assignment

What can be assigned?

Under the Trademarks Act (2010:1877), both registered and unregistered trademarks may be assigned (wholly or partly) separately or in connection with a transfer of the business in which it is used.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

There are no special requirements as for the form of the assignment. An assignment of a registered trademark will, however, on request, be recorded in the Trademark Register and published. There are forms available on the Patent and Registration Office’s website. No notarisation is required.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

An assignment of a Swedish trademark must not be recorded to have legal effect between the parties or against third parties, but has procedural benefits and is therefore generally recommended.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A registered trademark may be pledged through the registration of a written pledge agreement with the Patent and Registration Office. The trademark owner or the pledgee may request registration of the agreement. The right of pledge arises on the date of registration thereof and is protected in relation to third parties from that date.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

A trademark owner or licensee may request an injunction under penalty of a fine by filing an application for summons with the Patent and Market Court against a party that commits, or contributes to, a trademark infringement. Preliminary injunctions are available but requires that the applicant provides security for the potential damages that the defendant may suffer if the preliminary injunction is later overturned. The trademark owner or licensee may also claim damages.

In order to secure evidence, a trademark owner or licensee may request that the court:

  • orders the suspected infringer (or certain other parties involved in the commercialisation) under penalty of a fine, to provide information about the origin and the distribution network in relation to the infringed goods and services (ie, an order to provide information); and
  • orders an investigation to be undertaken in respect of a suspected infringer (or contributor) to search for objects and documents that can be assumed to be of importance for the investigation (ie, an infringement investigation).

It is also possible to bring an act of prosecution for trademark infringement or call for prosecution by a public prosecutor. If an infringement is committed wilfully or with gross negligence, the infringer may be fined or sentenced to up to two years’ imprisonment. However, in practice, it is uncommon for an infringer to be sentenced to imprisonment. An important legal restriction is that if a party has violated an injunction under penalty of a fine, they may not be held criminally liable for infringements covered by the injunction.

A trademark owner or licensee may also file a request for revocation of a registered infringing trademark with the Patent and Market Court or the Patent and Registration Office, on the ground that the trademark has been registered in violation of the Trademarks Act (2010:1877).

To prevent imminent infringement, the rules regarding injunctions (including preliminary injunctions), orders to provide information, infringement investigations and criminal liability also apply in relation to attempts and preparations to commit acts that constitute trademark infringement.

Since 1 September 2016, there are specialised courts for IP, marketing and competition law cases. The Patent and Market Court (a division of the Stockholm District Court) has exclusive jurisdiction as the first-instance court to hear trademark disputes. Its decisions may be appealed to the Patent and Market Court of Appeal (a division of the Svea Court of Appeal). Leave to appeal is required in civil cases and some criminal cases. Decisions of the Patent and Market Court of Appeal may be appealed to the Supreme Court if leave to appeal is granted. In civil cases, a prerequisite for appeal is that the Patent and Market Court of Appeal grants a right to appeal.

Procedural format and timing

What is the format of the infringement proceeding?

Since 1 September 2016, there are specialised courts for IP, marketing and competition law cases. The Patent and Market Court (a division of the Stockholm District Court) has exclusive jurisdiction as the first-instance court to hear trademark disputes. Its decisions may be appealed to the Patent and Market Court of Appeal (a division of the Svea Court of Appeal). Leave to appeal is required in civil cases and some criminal cases.

Decisions of the Patent and Market Court of Appeal may be appealed to the Supreme Court if leave to appeal is granted. In civil cases, a prerequisite for appeal is that the Patent and Market Court of Appeal grants a right to appeal.

A trademark owner or licensee may file a petition for an injunction under penalty of a fine at the Patent and Market Court against a party that commits, or contributes to, a trademark infringement. The court may issue a preliminary injunction if:

  • the plaintiff shows probable cause that a trademark infringement or a contribution to an infringement is taking place; and
  • it can be reasonably expected that the defendant, through the continuation of his or her acts, will diminish the value of the exclusive right in the trademark.

Before a preliminary injunction is issued, the defendant will be given an opportunity to respond to the allegations if such delay will not entail a risk of damage. A preliminary injunction may generally be rendered only if the plaintiff provides security to the court. When the infringement case is adjudicated, the court will decide if the injunction will remain in force. Preliminary injunction proceedings are typically only written, and oral hearings are rare.

To prevent imminent infringement, the rules regarding injunctions, orders to provide information, infringement investigations and criminal liability also apply in relation to attempts and preparations to commit acts that constitute trademark infringement

The usual time frame for an infringement action is roughly:

  • 12 to 18 months from the filing of the application for summons in the court of first instance; and
  • eight to 12 months in the Court of Appeal.

The time frame for preliminary injunctions is roughly three to six months and one to three months, respectively.

A public prosecutor may bring an act of prosecution if: the injured party calls for prosecution; and if prosecution, for specific reasons, is called for in the public interest.

Burden of proof

What is the burden of proof to establish infringement or dilution?

n a case amenable to out-of-court settlement, the burden of proof is divided between the parties. Thus, the rights holder must show infringement or dilution. The alleged infringer has the burden of proof for counter statements.

To obtain an order to provide information, the applicant must show probable cause that a trademark infringement has been committed and that the reasons in favour of an order to provide information must outweigh the opposing interests of the alleged infringer.

To obtain an order for an infringement investigation, it must be reasonably assumed that someone has committed, or contributed to, an infringement and the reasons in favour of an investigation must outweigh the opposing interests of the alleged infringer or contributor.

To obtain a preliminary injunction, the plaintiff must show probable cause for an infringement, or a contribution to an infringement, and that it reasonably can be expected that the defendant, through the continuation of the infringement or the contribution to the continuation of the infringement, diminishes the value of the exclusive right in the trademark.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark owner, and under certain circumstances a licensee, may file an action for injunctions, damages, orders to provide information and infringement investigations. The licensee is always allowed to sue for damages if the trademark owner brings an action before the court. The injured party may bring an act of prosecution for trademark infringement. A public prosecutor may also bring an act of prosecution if: the injured party calls for prosecution; and if prosecution, for specific reasons, is called for in the public interest.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Customs may intervene against goods suspected of infringing IP rights that are brought into Sweden from a non-EU country. Interventions can be made either on the agency’s own initiative or following an application from a rights holder. However, customs may not intervene against parallel imported goods or goods carried by passengers in their personal luggage, unless there are indications that commercial traffic is involved. The rights holder is also entitled to prevent all third parties from, without the rights holder’s consent, bringing goods into Sweden, in the course of trade, without the goods being released for free circulation, where such goods bear a mark which is identical or essentially identical to the rights holder’s mark.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Discovery is not available in Sweden. There are, however, certain devices under which evidence can be obtained from an adverse party.

To secure evidence, a trademark owner or licensee may request that the court:

  • orders the suspected infringer (or certain other parties involved in the commercialisation) under penalty of a fine, to provide information about the origin and the distribution network in relation to the infringed goods and services (ie, an order to provide information); and
  • order an investigation to be undertaken in respect of a suspected infringer (or contributor) to search for objects and documents that can be assumed to be of importance for the investigation (ie, an infringement investigation).

In ongoing court proceedings, it is possible to request the other party to provide documents that can be assumed to have an evidential value. Documents containing trade secrets are only required to be provided under special circumstances.

In general, it is difficult to obtain evidence from adverse parties without having some initial evidence of an infringement. Swedish courts do not like 'fishing expeditions' and requests for documents should be fairly specific. Other than the above-mentioned devices, there is little room for getting hold of evidence through a court. In relation to trade secrets in particular it should be noted that the parties and their counsel may become liable if they receive trade secrets in an ongoing litigation and make use of them in violation of applicable rules (eg, submitting in other court proceedings or sharing with other parties).

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The usual time frame for an infringement action is approximately:

  • 12 to 18 months from the filing of the application for summons in the court of first instance; and
  • eight to 12 months in the Court of Appeal.

The time frame for preliminary injunctions is approximately three to six months and one to three months, respectively.

Limitation period

What is the limitation period for filing an infringement action?

There is no specific limitation period for filing an infringement action under the Trademarks Act. However, the right to compensation for damages for the infringement of a trademark expires if no action is brought within five years from the date the damages occurred. With respect to registered trademarks, in no case earlier than one year from the date of registration.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The typical range of costs for an infringement action will obviously depend on several circumstances and it is hard to give a general number. Typically, we would assume that legal fees in the first instance court (including application for summons, exchange of writs, a preparatory meeting with the court and a main hearing) will amount to 1 million Swedish kronor and upwards. This does not include costs for potential experts or translations. Costs in the court of second instance will typically be around 40 to 60 per cent of the costs in the first instance court.

The main rule is that the party that wins the litigation (the plaintiff or the defendant) is awarded full compensation for litigation costs. Such costs include legal fees, internal work, costs for experts and translations etc. It is not uncommon that the court does not grant full compensation for the litigation costs (eg if the court considers that the case did not require the amount of work put into it by the successful party). In order to receive compensation for litigation costs it is important to provide a detailed statement of costs specifying what work that has been done and the costs attributable to it.

Appeals

What avenues of appeal are available?

Patent and Market Court (the first instance court) decisions may be appealed to the Patent and Market Court of Appeal. Leave to appeal is required in civil cases and some criminal cases.

Patent and Market Court of Appeal decisions may be appealed to the Supreme Court. In civil cases, a prerequisite for appeal is that the Patent and Market Court of Appeal grants a right to appeal. Leave to appeal is required for a case to be tried by the Supreme Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Possible defences include:

  • that the owner has consented to the use;
  • that the trademark has not been used in the course of trade;
  • that there is insufficient similarity in relation to the earlier mark or the relevant goods and services;
  • that the use does not adversely affect any of the earlier trademark’s functions or that there is no likelihood of confusion;
  • that the exception for use in accordance with honest business practice applies (eg, if the mark describes the relevant product’s characteristics);
  • that the rights of the earlier mark have been exhausted;
  • that requirements for co-existence are met; and
  • that the plaintiff’s trademark is invalid or should be revoked (eg, due to registration in violation of the Trademarks Act (2010:1877), non-use or because the trademark has degenerated).
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

A trademark owner is entitled to reasonable compensation for use of its mark and compensation for any additional damages caused by the trademark infringement if it is committed with intent or negligence. When calculating the damages, the following will be considered:

  • loss of profit;
  • profit made by the infringer;
  • damage to the reputation of the trademark;
  • moral damage; and
  • the rights holder’s interest that the infringement ceases.

The court may also order the infringer to pay pecuniary compensation for appropriate measures to spread information about the judgment. If trademark infringement is committed without intent or negligence, a trademark owner may be entitled to reasonable compensation for use of the trademark if and to the extent that it is reasonable.

Punitive damages are not allowed under Swedish law. Damages must always reflect the actual economic loss suffered by the trademark holder.

In addition to the other remedies set out above, the Patent and Market Court may decide on measures to be taken with regard to property used in connection with a trademark infringement (eg, market recall, alteration or destruction).

Both preliminary and permanent injunctive relief is available. In order for a preliminary injunction to be granted it is sufficient to show probable cause for the infringement. A preliminary injunction is requested as part of the main action. The proceedings in relation to preliminary injunction are usually only written, and oral hearings are rare. In order for a preliminary injunction to be granted the plaintiff must provide security for the damages the defendant may suffer if the preliminary injunction is later overturned.

It is possible to bring an act of prosecution for trademark infringement or call for prosecution by a public prosecutor. In order for a public prosecutor to sue the injured party must call for prosecution and prosecution, for specific reasons, must be called for in the public interest If an infringement is committed wilfully or with gross negligence, the infringer may be fined or sentenced to up to two years’ imprisonment. However, in practice, it is uncommon for an infringer to be sentenced to imprisonment. An important legal restriction is that if a party has violated an injunction under penalty of a fine, they may not be held criminally liable for infringements covered by the injunction.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Mediation offers an informal, confidential dispute resolution method for parties wanting to resolve their disputes amicably. Mediation may be undertaken as a first step, before litigation or arbitration, provided that both parties agrees to use a mediator. The mediation is a non-binding procedure; however, a settlement agreement can be confirmed in an arbitral award. Mediation is thus a flexible dispute resolution method, as it enables the parties to stay in control of the process.

ADR proceedings may also be used in relation to domain names, and thus indirectly in relation to trademarks. ADR for the top-level domain .se is administered by WIPO. The decision of the ADR will state whether the domain name is to be deregistered, transferred to the petitioner, or whether the petitioner’s ADR petition is to be rejected.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The Patents and Market Court of Appeal recently handed down a decision changing the previous trademark jurisprudence in Sweden granting trademarks registered in black and white a scope of protection covering all colours and colour combinations. In the aforementioned decision, the Patents and Market Court of Appeal abandoned its previous view as it found that it followed from a ruling by the Court of Justice of the European Union that a black and white mark cannot be granted a scope of protection automatically covering all colour combinations.