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.