Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Denmark is the Danish Trademarks Act and the EU Trademark Regulation.

International law

Which international trademark agreements has your jurisdiction signed?

Denmark is a member of the following international trademark agreements and treaties:

  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
  • the Singapore Treaty on the Law of Trademarks.

Further, Denmark is a party to the following general treaties and conventions relating to IP rights, including trademarks:

  • the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
  • the Paris Convention for the Protection of Industrial Property 1883 (Paris Convention).
Regulators

Which government bodies regulate trademark law?

The Ministry of Industry, Business and Financial Affairs is the government agency responsible for trademark legislation. The legislation is administered by the Danish Patent and Trademark Office (PT office).

Registration and use

Ownership of marks

Who may apply for registration?

Any private person, legal entity or organisation may apply for registration of trademarks.

However, there are certain limitations for collective marks as well as guarantee and certification marks.

Scope of trademark

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

Any sign that meets the minimum requirements of distinctiveness and is capable of being reproduced clearly and precisely can be registered as a trademark, including:

  • words and word combinations, including slogans, personal names, company names and names of buildings;
  • letters and numerals;
  • pictures and designs;
  • the shape, equipment or packaging of the goods;
  • sounds; and
  • movements

The previous graphical representation requirement was lowered with the implementation of Directive (EU) 2015/2436. Non-traditional marks such as taste and scent marks are now also registrable pursuant to the Danish Trademarks Act if the applicant can represent such mark clearly and precisely in such way that the subject matter of the protection granted can be determined by the relevant authorities and the public.

Unregistered trademarks

Can trademark rights be established without registration?

Yes. A trademark right can be established without registration based on mere use of the mark in the Danish market.

In accordance with the Danish Trademarks Act, unregistered trademarks enjoy protection from commencement of use in Denmark for the goods or services for which the trademark is used. The use, however, must be more than just local.

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?

Yes. Well-known foreign trademarks may be afforded some protection even in cases where they are not used domestically. The proprietor of a well-known trademark may oppose registration of or instigate invalidation proceedings against an identical or similar later trademark if the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the well-known trademark. This applies irrespective of whether the goods or services, for which the later trademark has been applied or registered for, are identical or similar to those of the earlier well-known trademark.

The benefits of registration

What are the benefits of registration?

Although trademarks established by use are equated with registered trademarks, there are certain benefits of registration, for example:

  • an applied for or registered trademark may be relied upon as a priority in relation to an application for registration of the trademark in another jurisdiction (eg, through the Madrid Protocol or the EU trademark system);
  • the registry database shows how the trademark looks, what type of goods and services it is registered for and the date on which the protection was established. The proprietor can thus immediately document the extent of the trademark right towards third parties and infringers; and
  • further, the proprietor of a registered trademark may prevent a third party from bringing goods into the Danish customs territory (see question 30 for more information about border enforcement against unauthorised goods).
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?

A trademark application must include the following documentation:

  • a request for registration;
  • the name and address of the applicant (or agent, if applicable);
  • specification of the goods and services;
  • a representation of the mark;
  • a power of attorney (if applicable); and
  • the priority claim (if applicable).

Providing a power of attorney is not required if the agent is an attorney-at-law or a recognised IP adviser (including patent and trademark attorneys).

The representation of the mark in the application must be in a form capable of being reproduced in the trademark database in a way that allows the authorities and the public to determine the clear and precise subject matter of the protection granted to the proprietor. 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.

Electronic filing is available.

Trademark searches are not required before filing; however, they are often recommendable. The PT office provides a searchable database on its website, which is available to the public free of charge. More extensive searches can be conducted through private search databases.

As part of the examination procedure, the PT office conducts prior rights searches for information purposes on relative hindrances.

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 examination time of the PT office for a trademark application is typically between eight to 12 weeks. If no absolute grounds for refusal of registration are found, the trademark will be published in the Danish Trademark Journal. Thereafter, third parties will have two months to oppose the final registration of the trademark.

If an opposition is filed during the two-month opposition period, opposition proceedings will be initiated. Such proceedings take approximately 12 to 18 months.

If the application meets all the requirements and no opposition to the application is filed by third parties, or it is finally decided that the application is sustained despite such opposition, the PT office will register the trademark and publish a notice of the registration in the Danish Trademark Journal. Once the trademark is registered, the protection comes into effect from the date of filing of the application.

In the event an opposition is filed or the application is met with absolute hindrances from the PT office, the estimated time of obtaining trademark registration will increase.

The application fee is 2,000 Danish kroner for one class. The first additional class costs 200 Danish kroner, with any additional classes hereafter costing 600 Danish kroner per class.

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?

Classifications are handled in accordance with the Nice Classification of Goods and Services.

Multi-class applications are available. The application fee is 2,000 Danish kroner for one class. The first additional class will cost 200 Danish kroner, with any additional classes hereafter costing 600 Danish kroner per class. Thus, the cost savings vary depending on the number of classes; for the first additional class the cost savings will be 1,800 Danish kroner and 1,400 Danish kroner for any additional classes hereafter.

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 examination conducted by the PT office includes the following factors:

  • formal requirements;
  • the classification of goods and services; and
  • whether there are any absolute grounds for refusal.

Applicants are allowed to rectify any deficiencies to the application within two or four months, and it is usually explained in a letter by the PT office 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.

If the PT office does not find any absolute grounds for refusal of registration, the trademark will be published in the Danish Trademark Journal. The PT office also checks for relative grounds for refusal and provides the applicant with a search report. However, the report is merely for information purposes as registration is not refused ex officio by the PT office based on relative grounds. The search report provides the applicant with the opportunity to deal with earlier rights found in the report (eg, by requesting a letter of consent to the registration from the holder of an earlier right).

If an application for registration of a trademark has been rejected, the decision may be appealed to the Appeals Board for Patents and Trademarks.

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?

The applicant neither has to claim use or intent to use of the trademark before registration is granted or issued, nor does the applicant have to submit proof of use in connection with the application process.

A registered trademark that has not been genuinely used in Denmark within five years after the final registration, or where such use has been suspended for five consecutive years, may be challenged and fully or partially revoked, unless the owner presents a valid reason for the non-use. The PT office will not initiate administrative revocation proceedings ex officio. However, if a third party challenges the mark through administrative or court proceedings, the burden of proof will be on the proprietor to document genuine use.

As for registration of trademarks that have acquired distinctiveness through use, the applicant must document the use of the mark, including the extent of such use in respect of time and goods and services as a requirement for registration.

If the proprietor of an unregistered trademark established by use does not continuously use the trademark, the right is forfeited (ie, the five-year rule does not apply to unregistered trademarks).

Applicants may claim priority from an earlier application or registration in another member state of the Paris Convention, World Trademark Organization, European Union or a state that has a bilateral agreement with Denmark. Priority may be claimed only within six months of the application date for the filing of the trademark. The priority application in the foreign country must be the first application 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.
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?

Two symbols may be used to indicate trademark use or registration; the ™ symbol and the ® symbol. Use of these symbols is not mandatory.

These two symbols have no official meaning in Denmark, but they are commonly known and acknowledged. The two symbols have different meanings. The ™ symbol is an abbreviation for 'Trademark' and may be used for unregistered trademarks. The ® symbol stands for 'Registered Trademark' and should only be used for registered trademarks.

The symbols show that the proprietor considers the relevant trademark as their property and that third parties should refrain from using identical or similar marks. Further, it sends a signal that the proprietor wants to protect the trademark from potential infringers.

Appealing a denied application

Is there an appeal process if the application is denied?

Yes. Rejected applications may be appealed to the Board of Appeals for Patents and Trademarks within two months of the decision. The fee for an appeal is 4,000 Danish kroner. The appeal procedure is conducted in writing. After the appellant has filed the notice of appeal, the Board of Appeal obtains the PT office’s re-assessment on the case. The appellant then has 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 Appeal may be brought before the ordinary courts.

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?

Applications are published for opposition prior to registration. Once the application is published in the Danish Trademark Journal, third parties may oppose the registration within a two-month opposition period.

Registration of a trademark may be opposed on absolute or relative grounds. Opposition on absolute grounds is primarily justified if the sign:

  • cannot constitute a trademark; or
  • lacks distinctive character, ie, 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;

A third party who owns or holds an earlier trademark may oppose registration on relative grounds. Oppoisition on relative grounds is primarily justified if the sign is:

  • identical to an earlier trademark for identical goods or services;
  • identical or similar to an earlier trademark 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; or
  • identical or similar to an earlier trademark that is well known and registration of the mark 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 trademark;

Further, opposition to an application can be made by an owner or holder of an earlier trademark that is valid in another jurisdiction if the mark can be confused with the earlier trademark and if the applicant was in bad faith at the time the application was filed.

After registration, third parties may seek cancellation of the trademark on similar grounds.

Oppositions must be filed with the PT office and must specify the grounds on which it is filed. The applicant will get an opportunity to file a reply to the opposition, after which the PT office will decide if further statements from the parties are needed. The number of statements may differ depending on the complexity of the matter.

In case of opposition, the PT office may decide to uphold the appliciation in its entirety or reject the application in whole or in part.

The opposition fee is 2,500 Danish kroner.

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 term of protection is 10 years from the date of application. A 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 (grace period against an increased fee).

Use of the trademark is not required for its maintenance. However, a registered trademark that has not been genuinely used in Denmark within five consecutive years after the final registration or where such use has been suspended for five consecutive years may be challenged by any third party and fully or partially revoked, unless the owner presents a valid reason for the non-use. The PT office will not initiate administrative revocation proceedings ex officio. If a third party challenges the mark through administrative or court proceedings, the burden of proof will be on the proprietor to document genuine use.

Documentation of genuine use must establish the time, place, extent and nature of the use of the trademark for the goods or services for which it is registered.

If the proprietor of an unregistered trademark established by use does not continuously use the trademark, the right is forfeited.

Surrender

What is the procedure for surrendering a trademark registration?

A proprietor may surrender a trademark registration at any time, wholly or in part, by written request to the PT office.

Related IP rights

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

In theory, trademarks may also be protected under the Copyright Act or the Design Protection Act if the trademark fulfils the requirements for such protection. However, case law from the Maritime and Commercial High Court suggests that trademarks being used as such are not protected under copyright law in addition to the trademark protection, unless they are very aesthetic and original.

Trademarks online and domain names

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

The Trademarks Act protects the proprietor against infringement regardless of whether the infringing acts are conducted offline or online.

A proprietor may use its trademark as a domain name, and it will thus enjoy the same protection as any other trademark.

The mere registration of a domain name with a domain name registrar does not grant the registrant a trademark right to the domain name (if such a right does not exist in the first place). The registration of a domain name entails that the owner obtains an exclusive right to use the domain address, but this right alone does not prohibit others from using the name for a business or product. However, a domain name owner may also register its domain name as a trademark if it meets the general requirements for trademark protection.

The Domain Names Act regulates the registration and use of domain names under the Danish .dk domain.

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)?

It is possible to record a licence involving a trademark with the PT office. The legal effect of a licensing agreement does not depend on its entry into the trademark registry. However, the entry of a licensee in the register can be an advantage for enforcement purposes. The PT office shall, at the request of the trademark owner or licensee, enter a note on the licence in the trademark registry and will in this connection request proof and documentation of the underlying agreement. As a large majority of the correspondence submitted to the PT office will become public, it is recommendable that any agreements submitted be redacted in respect of confidential terms and information. Often, however, the following terms will need to be readable.

Trademark licensing agreements that typically include:

  • provisions on the grant of rights and the scope of the agreement (for all or some of the goods and services for which the trademark is registered, the licensed territory, exclusive or non-exclusive);
  • a provision on the licensee's right to grant sub-licences; and
  • provisions on the enforcement of the licensed trademark (who defends the trademark in case of third-party infringement).
Assignment

What can be assigned?

Trademarks may be sold and assigned wholly or in part. The right to a trademark may be transferred in connection with or separately from the business in which it is used. If a proprietor transfers its business, the right to the trademarks passes automatically to the transferee, unless otherwise agreed or deemed to be agreed.

Trademarks can be assigned with or without goodwill. There exist no rules governing this specific topic under Danish trademark law; however, tax and transfer pricing consequences of transfers with or without goodwill must be considered.

It is recommended that assignments are recorded with the PT office, but is not a requirement for the validity of an assignment.

Assignment documentation

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

If the PT office is to register a transfer, documentation for the transfer must be submitted in the form of an electronic copy of the dated transfer document or an extract of the transfer document signed by the proprietor. The names of both the assigner and the assignee must be stated in the document as well as information to identify the transferred trademark. Further, the transfer document must not include conditions for the transfer to take effect.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

The legal effect of an assignment does not depend on its entry in the trademark registry. However, the entry of the new owner in the registry is highly recommended for notoriety and enforcement purposes. The PT office shall, at the request of the trademark owner or pledgee, enter a note to that effect in the trademark registry.

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?

Security interests are recognised and can be registered over a trademark, because IP rights can be pledged in accordance with the Danish law of mortgages and pledges. If the right to a registered trademark has been pledged, the PT office shall, at the request of the trademark owner or pledgee, enter a note to that effect in the trademark registry. However, the legal effect of a pledge agreement does not depend on its entry into the register.

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?

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.

A rightful user of a collective mark or guarantee and certificate mark can file an infringement action only if the owner of the mark has given its consent thereto, unless otherwise set out in the terms of use of the mark.

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.
Remedies

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;
  • destruction;
  • delivery-up;
  • 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.

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?

On 1 March 2019, the Maritime and Commercial High Court issued a ruling in a case between Trek Bicycle Corporation and T Hansen Gruppen A/S regarding trademark infringement. The ruling is notable since it lays down the relevant criteria to be considered when assessing whether a claim of trademark infringement has been lost as a result of passivity and acquiescence. These criteria include:

  • the seriousness of the alleged infringement;
  • possible bad faith of the proprietor of the later mark;
  • the duration of use of the later mark;
  • the intensity of the use of the later mark;
  • the scope and content of the marketing of the later mark;
  • whether the proprietor of the earlier mark should have discovered and protested against the use of the later mark; and
  • whether the proprietor of the earlier mark has been present on the market in Denmark.