An extract from The Trademarks Law Review, 5th Edition
Civil litigationi Forums
Trials concerning national trademarks may, at first instance, be submitted to the city courts as well as the Maritime and Commercial High Court, although either party to such a dispute may demand that the case be referred to the Maritime and Commercial High Court.61
Disputes concerning EU trademarks must, at first instance, be submitted to the Maritime and Commercial High Court, which has exclusive jurisdiction in such matters.62
Judgments in trademark disputes rendered by the city courts may be appealed to the high courts.63 Certain monetary thresholds apply, but these thresholds are generally not relevant to trademark disputes.
Judgments rendered by the Maritime and Commercial High Court in trademark disputes may be appealed to the high courts.64 In addition, these judgments may be appealed to the Supreme Court if the matter is of principal relevance and is of general significance to the administration of justice and the legal development or has a significant social scope; or if other special reasons justify that the case be heard by the Supreme Court in the second instance.65
In addition to ordinary trials, trademark disputes may also be submitted to the courts in the form of preliminary injunction actions.66 An action for preliminary measures in a trademark dispute may be submitted, even if a trial concerning the same dispute is pending. Pursuant to Section 43b of the Trademarks Act, such actions may be submitted to the city courts or the Maritime and Commercial High Court, although either party to such a dispute may demand that the case be referred to the Maritime and Commercial High Court.67 Section 43b(3) of the Trademarks Act, on the other hand, stipulates that if the preliminary measures are to have effect in all EU Member States, an action for preliminary measures must be submitted to the Maritime and Commercial High Court.
Decisions on preliminary measures rendered by the city courts may be appealed to the high courts, whereas decisions on such measures rendered by the Maritime and Commercial High Court must be appealed to the high courts.68 If some sort of preliminary measure is awarded, a trial on the merits must be submitted within 14 days.69ii Pre-action conduct
Before civil litigation is commenced, the infringed trademark proprietor will often approach the infringer, often in the form of a cease and desist letter or similar. Obviously, such a letter serves the purpose of avoiding legal proceedings. However, under Danish law there are other advantages to approaching the infringer in this way. First, a cease and desist letter ensures that the infringer may no longer be said to act in good faith.70 Second, if the trademark proprietor does not approach the infringer, the proprietor risks not being awarded (full) costs, even if the subsequent action for preliminary measures or trial is successful.
No specific legislation covers the sending of cease and desist letters. However, pursuant to Section 126 of the Danish Administration of Justice Act, Danish lawyers must adhere to 'good lawyer conduct'. This means that a lawyer acting on behalf of a trademark proprietor must disclose information essential to the infringer's assessment of risk, including as part of a cease and desist letter.71
Before civil litigation is commenced, a trademark proprietor may also apply for the securing of evidence pursuant to Section 653 of the Administration of Justice Act. As opposed to actions for preliminary measures, securing of evidence actions must be submitted to the bailiff's courts.
In Denmark, there are generally three alternatives to civil litigation in trademark disputes, namely arbitration, mediation and court mediation. All share one common characteristic, namely that they only come into play if the parties to a trademark dispute agree to pursue a path that is different from civil litigation.iii Conduct of proceedings Discovery and disclosure as part of proceedings
Pursuant to Chapter 29a of the Danish Administration of Justice Act, a party to an intellectual property infringement trial may ask the court to order the opposing party as well as a third party to disclose certain infringement information under certain circumstances, provided that it has already been fully established that an infringement has occurred. In addition, pursuant to Sections 298 and 299, a party to an intellectual property infringement trial may ask the court to order the opposing party as well as a third party to produce evidence on which the asking party intends to rely. If the opposing counsel fails to comply with such orders, the court may assume that the factual circumstances are as the party asking for disclosure has presented them to the court. If a third party fails to comply, the third party may face various sanctions, including fines. Chapter 29a of the Danish Administration of Justice Act does not apply to actions for preliminary measures.72Submission of legal and factual evidence
In the context of actions for preliminary measures, there are very few restrictions on submissions of legal and factual evidence. In most cases, the courts will allow examinations of party representatives and witnesses, submissions of various documents, submissions of products and other physical forms of evidence and expert opinions (including one-sided expert opinions). However, the court may restrict evidence, which will prolong the injunction case unreasonably.73
In the context of trials at first instance, various evidence restrictions apply. First of all, evidence must be submitted within certain time frames that are normally fixed by the courts. Generally, evidence will be allowed, even if it has been obtained illegally.74
On the other hand, access to submit expert opinions is restricted in the context of trials. Expert opinions obtained by one party before the trial may, in most cases, be produced as evidence, whereas expert opinions obtained by one party, after the trial is initiated, may not be submitted.Written and oral proceedings
In Denmark, the starting point is that cases are pleaded orally.75 Even so, cases may be pleaded in writing, if the parties agree to it, and if special circumstances support that the trial be pleaded in writing.76 Where the focal point of a trial is one of law and not one of evidence, such a trial may be suitable for pleading in writing.Legal representation
The starting point is that only lawyers may represent parties at trial.77 There are exceptions to this starting point, but they are never relevant in the context of trademark disputes. That said, any party may represent itself, himself or herself,78 although the courts may force such parties to retain legal representation.79Cost recovery
In terms of cost recovery, the starting point is that the losing party must cover the costs inflicted by the trial on the winning party, unless the parties have agreed otherwise.80 This wording might suggest that, in Denmark, trial costs are fully recovered. This is not the case. Out-of-pocket expenses, such as those associated with obtaining an expert opinion before the court, are normally fully covered. However, legal fees are only covered up to an 'appropriate amount', which, in principle, is awarded arbitrarily by the courts.81 The presidents of the Western and Eastern High Courts have issued a brief on costs in civil trials, which, among other things, contains a table of costs corresponding to the value of the case, which is mostly adhered to.82Time frames
The Danish Administration of Justice Act does not set out any maximum time frames for civil proceedings.iv RemediesTrial remedies
The Trademarks Act is quite clear about which remedies may be applied for in a regular trial concerning trademark infringements. If a trademark infringement is established, the trademark proprietor may, in accordance with Article 13 of the Enforcement Directive,83 claim reasonable remuneration and damages.84 The term 'reasonable remuneration' means a licence fee. Reasonable remuneration may be awarded, even if no loss has been substantiated. On the other hand, damages are only awarded if some sort of (additional) loss may be established. In April 2021, the Danish Maritime and Commercial High Court awarded a rare amount in remuneration and damages of 1 million Danish kroner.85
In addition to reasonable remuneration and damages, a trademark proprietor may, inter alia, claim that goods infringing a trademark right be: (1) temporarily withdrawn from the trade; (2) finally withdrawn from the trade; (3) destroyed; or (4) handed over to the trademark proprietor; and (5) that the infringing trademarks be removed.86Preliminary remedies
If, in the context of an action for preliminary measures, a trademark infringement is rendered likely (as opposed to demonstrated), the applicant may ask the court to order that the subject of the action for preliminary measures is ordered to perform, abstain from or withstand certain actions.87 Moreover, the applicant may ask the court to seize goods that are likely to be used to violate an injunction or an order.88
Other enforcement proceedings
Pursuant to Section 42(2) of the Trademarks Act, intentional trademark infringements in aggravating circumstances may result in imprisonment of up to one year and six months, unless a higher penalty is warranted under Section 299b of the Danish Criminal Code.89 Section 299b of the Criminal Code states that trademark infringements of a particularly serious nature may result in imprisonment for up to six years, if the purpose of the trademark infringement was to obtain unjustified profits or if, regardless of the profits obtained, the circumstances are particularly aggravating. This means that if a trademark proprietor is faced with particularly grave trademark infringements, which fall under the scope of either Section 42(2) of the Trademarks Act or Section 299b of the Criminal Code, the trademark proprietor may report such infringements to the State Prosecutor for Serious Economic and International Crime (SØIK).90 If, following an investigation, SØIK decides to proceed with the charges, the trademark proprietor may, in principle, file a claim for damages as part of the criminal proceedings.91 However, trademark proprietors often find that the courts decide to carve out claims for damages, leaving it to the trademark proprietors to initiate civil proceedings.92