EnforcementTrademark 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?
The enforcement courts are the first-instance courts in relation to search and seizure actions concerning trademarks and other IP infringements. For more information on search and seizure actions see question 31.
The Maritime and Commercial High Court, being the official IP court in Denmark, is the first-instance court in relation to preliminary injunction proceedings and ordinary court proceedings concerning Danish and EU trademarks and other IP rights.
The following civil legal proceedings are available to the proprietor:Preliminary injunction proceedings
To immediately stop an infringement, the proprietor may apply to the Maritime and Commercial High Court for a preliminary injunction. The purpose of a preliminary injunction is to stop an alleged infringement to avoid further harm to the proprietor.
A preliminary injunction is an interim measure. The court's decision is not a final decision on the merits, and it is not possible to claim damages as part of the proceedings. The proprietor must thus commence ordinary court proceedings on the merits against the infringer within two weeks of the decision in a preliminary injunction case.
A preliminary injunction may be enforced through the enforcement courts. If the alleged infringer intentionally fails to comply with the preliminary injunction, he will be liable to pay a fine or in extreme cases to imprisonment, and the proprietor will be entitled to claim damages.Ordinary court proceedings
The proprietor may commence ordinary court proceedings before the Maritime and Commercial High Court to enforce its trademark rights. In ordinary court proceedings, the proprietor may request a permanent injunction against the infringing acts or claim monetary relief (eg, damages). Certain ancillary remedies is also available to the proprietor (see question 37).
In cases where stopping an infringement immediately is not critical or where time for some other reason is not of utmost importance, it is often advisable to commence ordinary court proceedings on the merits to begin with instead of applying for a preliminary injunction.
For information on criminal proceedings, see questions 29 and 37.Procedural format and timing
What is the format of the infringement proceeding?
The procedural format in ordinary court proceedings is that of written pleadings followed by an oral hearing. This procedural format is similar to the format in preliminary injunction proceedings although such proceedings generally moves faster (eg, due to stricter deadlines being set by the court).
Live testimony is allowed. The party who wish to call a witness must state a theme of the testimony, as well as a basis for why it is relevant to hear the witness.
Declarations from experts obtained by one party alone are only allowed as evidence if the declaration was obtained before the filing of the writ of summons. This may be different in preliminary injunction proceedings, where the access for the plaintiff to substantiate its claims are somewhat larger.
Further, either party may request that the court appoints an independent expert to prepare an impartial expert report.
The usual time frame for ordinary court proceedings is approximately 12 to 18 months, with a possible further 12 months if the first-instance court judgment is appealed. The time frame for preliminary injunction proceedings is approximately one to six months.Burden of proof
What is the burden of proof to establish infringement or dilution?
The proprietor carries the burden of proof in cases regarding infringement or dilution.
In ordinary court proceedings, the proprietor is required to prove its case in full (ie, by establishing infringement or dilution).
The proprietor's burden of proof in preliminary injunction proceedings is different from, and not as onerous as, the burden of proof in ordinary court proceedings. The proprietor is thus not required to prove its case, but only to render likely that certain circumstances is fulfilled. See question 37 for more information.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The proprietor can file a trademark infringement action.
A licensee can file a trademark infringement action if the trademark owner has given its consent or if the licensee has the right to do so according to a licence agreement. However, the licensee of an exclusive right may file a trademark infringement action itself if the proprietor, after receiving a formal request, has refrained from taking such action within reasonable time.
Infringements committed at larger scale or by organised groups, intentionally or with gross negligence and under aggravating circumstances may be prosecuted by the Public Prosecutor for Serious Economic Crime (SØIK) if the public interest requires prosecution. A separate task-force group has been set up by SØIK for discovery and prosecution in such matters parallel to civil matters.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?
A proprietor of a registered trademark may prevent third parties from bringing goods into the EU customs territory for commercial purposes if such goods, including their packaging, are imported from a non-EU or EEA country and bear a trademark without authorisation of the proprietor that is identical to the trademark registered for such goods. The proprietor has the same right if the trademark cannot be distinguished from the proprietor's trademark.
Furthermore, the proprietor may prevent a third party from placing its trademark on labels and packaging, etc, and prevent labels and packaging, etc, bearing the trademarking from being imported or exported as part of a potential infringement.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 available under Danish law in the form of a search and seizure order, which is usually carried out pre-trial, and where an infringer's disclosure of specific documents may be ordered during ordinary court proceedings.Search and seizure
A proprietor may apply to the enforcement court for a search and seizure order to secure evidence of an IP infringement and the extent thereof. The search can include all material being relevant for the assessment of whether and to what extent an infringement is taking place or has taken place. The search includes goods intended for sale, machinery and other manufacturing equipment, bookkeeping records, invoices, order forms, advertising material and other documents. The court appoints independent experts, such as IT experts and accountants, to assist in conducting the searches.Disclosure of specific documents
A party may request to the court that an opposing party or a third party must disclose specific documents, which are at such opposing or third party's disposal. Such request for disclosure must be specific and must concern documents of relevance to the matter. Furthermore, a request must contain information on the facts, which the requested documents shall serve as proof of as well as the reasons on which the request is based.
When disclosure of documents is requested by one of the parties, the court often initiates a formal procedure to determine whether to order disclosure of the requested documents or not. This prolongs the proceedings and can thus also increase the total costs of the case.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 ordinary court proceedings is approximately 12 to 18 months, with a possible further 12 months if the first-instance court judgment is appealed.
The time frame for preliminary injunction proceedings is approximately one to six months.Limitation period
What is the limitation period for filing an infringement action?
There is no statute of limitations for filing infringement actions. However, the statute of limitations for claiming damages is three years from the time that the damages occurred.
The general principles of passivity and acquiescence also apply to trademark disputes.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The court fees for filing an application for a preliminary injunction are 300 Danish kroner.
In ordinary court proceedings, the court fees consist of two parts; a filing fee and a fee for the oral hearing. The fees are calculated as initial standard fees plus 1.2 per cent of the amount of the claim. The maximum filing fee to be paid is 75,000 Danish kroner. Three months before the scheduled oral hearing, the fee for the oral hearing will fall due in the same amount as the filing fee.
In addition, there will be costs to the counsel handling the litigation proceedings. The fees vary depending on the nature of the case; however, when it comes to litigation, Denmark is a cost-efficient country compared to other jurisdictions.
The court may award attorney’s fees reflecting the extent to which the winning party has been successful. However, costs awarded by the court only cover part of the attorney fees spent as the awarded costs are based on tariffs. The awarded costs normally cover only a symbolic part of the actual legal costs.Appeals
What avenues of appeal are available?
A court’s decision to grant or refuse to grant a preliminary injunction may be appealed to the high courts. An appeal of a preliminary injunction will not have suspensory effect, which means that the court’s decision will take effect irrespective of whether the decision is appealed.
A court’s decision in ordinary court proceedings may appealed to a higher court. Under certain circumstances, a decision rendered by the Maritime and Commercial High Court may be appealed directly to the Supreme Court (eg, if the proceedings establish precedent or give rise to an issue of general public importance).
An appeal of a court’s decision in ordinary court proceedings will have suspensory effect if the appeal is submitted within 14 days of the decision.Defences
What defences are available to a charge of infringement or dilution, or any related action?
The following defences are available to an alleged infringer:
- that the trademark has not been used commercially;
- that the similarities in relation to the earlier trademark or the relevant goods and services are insufficient;
- that the use does not affect any of the trademark’s functions or that there is no likelihood of confusion;
- that the exception for use in accordance with honest business practice applies (eg, a third parties’ right to use their own name and address), or if the trademark describes the relevant product’s characteristics, or if the trademark is necessary for the intended purpose of the goods (spare parts);
- that the requirements for co-existence in sections 10(3) and 10b(3) of the Trademarks Act are met; and
- that the plaintiff’s trademark is invalid or should be revoked (eg, owing to the trademark registration being in violation of the Trademarks Act), non-use or because the trademark has degenerated.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
Injunctive relief is available both in the form of a preliminary or permanent injunction.
A preliminary injunction is an interim measure. The court's decision in preliminary injunction proceedings is, therefore, not a final decision on the merits, and it is not possible to claim damages as part of the proceedings. In preliminary injunction proceedings, the proprietor must render likely that:
- the acts against which the preliminary injunction is sought will infringe the proprietor's right;
- the alleged infringer is likely to perform such acts; and
- the purpose of the proceedings will be lost if the proprietor is to seek relief only by way of ordinary court proceedings.
In ordinary court proceedings, the court may grant a permanent injunction against the infringing acts. The proprietor may also claim monetary relief in the form of 'reasonable consideration for the exploitation' of its trademark right and damages for the additional damage caused by the infringement. The amount of such damages takes into consideration the proprietor's lost profits and the infringer’s unjustified profits. There are no punitive elements in the awarded consideration or damages. However, the court may award 'compensation' for elements other than economic factors, such as moral prejudice to the proprietor caused by the infringement.
Certain ancillary remedies are also available to the proprietor in ordinary court proceedings (depending on the circumstances):
- withdrawal of infringing products;
- alteration; and
- publication of the court's decision.
Infringements committed intentionally or with gross negligence and under aggravating circumstances is punishable by a fine or by imprisonment for up to one year and six months and may be prosecuted by the SØIK if the public interest requires prosecution. However, no convictions have been seen in recent years.
In ordinary court proceedings, the proprietor may claim that a fine shall be imposed on the infringer for infringements committed intentionally or with gross negligence.ADR
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
ADR techniques, such as arbitration and mediation, are available, but are primarily used regarding contractual disputes (eg, disputes regarding licensing agreements).
Disputes regarding infringement can also be resolved using arbitration, but this is uncommon.
Disputes regarding the validity of a trademark cannot be settled using arbitration or other ADR techniques. An arbitration court must assume that a trademark is valid or postpone the case until the question of validity has been resolved.