On January 1 2019 the amendments to the Trademarks Act (2010:1877), as a result of the implementation of the EU Trademark Directive (2015/2436/EC), entered into force. The below guide and its answers are currently being updated to reflect such amendments.
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Which courts are empowered to hear trademark disputes?
Since September 1 2016, there has been a new court format for IP, marketing and competition law cases. The Patent and Market Court (a division of the Stockholm District Court) has exclusive jurisdiction as 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.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
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. The owner or licensee may also claim damages. (Please see Injunctions and Remedies below).
In order to secure evidence, a trademark owner or licensee may request that the court:
- order 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).
To obtain an order to provide information, the applicant must show probable cause that a trademark infringement has been committed and the requested information must be assumed to facilitate the investigation. 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. Detailed rules apply for the processing of infringement investigations.
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, he or she may not be held criminally liable for infringements covered by the injunction.
Finally, a trademark owner or licensee may 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).
Who can file a trademark infringement action?
A trademark owner or a licensee may file an action for injunctions, damages, orders to provide information and infringement investigations.
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; or
- prosecution, for specific reasons, is called for in the public interest.
What is the statute of limitations for filing infringement actions?
There is no limitation for filing infringement actions, but if the owner of a mark has been aware of and acquiesced to the use of a later trademark registered in good faith for a successive five years after the date of its registration, the earlier mark and the later trademark will be allowed to co-exist. Further, an unregistered trademark will be allowed to co-exist with an earlier mark if the proprietor of the earlier mark has not taken action to prevent the use of the later mark within a reasonable period (normally shorter than a successive five-year period).
The statute of limitations for damages is five years from when the damages occurred.
What is the usual timeframe for infringement actions?
The usual timeframe 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 timeframe for preliminary injunctions is roughly three to six months and one to three months, respectively.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
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.
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.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
A trademark owner is entitled to reasonable compensation for use of its trademark 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 – for example, market recall, alteration or destruction.
What customs enforcement measures are available to halt the import or export of infringing goods?
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.
What defences are available to infringers?
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 older trademark or the relevant goods and services;
- that the use does not adversely 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, if the trademark describes the relevant product’s characteristics);
- that the rights of the older trademark 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).
What is the appeal procedure for infringement decisions?
Patent and Market 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 and leave to appeal is granted by the Supreme Court.
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