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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

In ordinary court proceedings, the district courts are generally the first-instance court. However, the Maritime and Commercial High Court is the first-instance court in trademark disputes concerning EU trademarks. Other trademark disputes may also be brought before the Maritime and Commercial High Court when trademark law is essential to the case. In practice, the Maritime and Commercial High Court hears most trademark disputes, as the district courts usually refer such disputes to it. 

Actions

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 may apply to the enforcement court for a search and seizure order to secure evidence of an infringement and the extent hereof. To obtain a search and seizure order, the trademark owner must show probable cause for trademark infringement and that there is reason to believe that evidence of the infringement and the extent thereof may be obtained from the premises where the search is to be carried out. The search may include all material being relevant for the assessment of whether and to what extent an infringement is taking place or has taken place.

The trademark owner may request that the Maritime and Commercial High Court (or district court) order a preliminary injunction to prohibit the use of the conflicting sign and claim disclosure and seizure of unlawfully marked products. Due to the preliminary nature of such order, the trademark owner must commence subsequent infringement proceedings against the infringer within two weeks of the preliminary order, unless the matter is settled between the parties beforehand.

Instead of requesting a preliminary injunction order, the trademark owner may choose to bring ordinary court proceedings against the alleged infringer.

Ordinary court proceedings will typically consist of the following procedural steps:

  • the plaintiff’s submission of a writ of summons;
  • the defendant’s statement of defence;
  • a preliminary oral hearing;
  • exchange of several written pleadings; and
  • an oral hearing with the possibility of interviewing witnesses.

A person infringing a trademark may also be held liable under criminal law and be subject to criminal penalties (eg, a fine or imprisonment). However, such cases are rare in Denmark, as trademark disputes are usually a civil matter.

Finally, the trademark owner may file a request for revocation with the Patent and Trademark Office on the grounds that the infringing mark has been registered in violation of the Trademarks Act.

Who can file a trademark infringement action?

The trademark owner (and typically also licensees) can file a trademark infringement action.

What is the statute of limitations for filing infringement actions?

There is no statute of limitations for filing infringement actions. However, a later right to a registered trademark may coexist with an earlier right to a confusingly similar trademark, provided that the application for registration was filed in good faith and that the holder of the earlier right has been aware of and tolerated the use (in Denmark) of the later right for a period of five successive years.

Further, a later right to a trademark may also coexist with an earlier right to a confusingly similar trademark if the holder of the earlier right has not, within a reasonable time, taken the necessary steps to prevent the use of the later trademark.

The general principles of passivity and acquiescence also apply to trademark disputes.

The statute of limitations for claiming damages is three years from the time that the damages occurred.

What is the usual timeframe for infringement actions?

The usual timeframe for ordinary infringement proceedings is approximately 12 months, with a possible further 12 months if the first-instance court judgment is appealed. 

The timeframe for preliminary injunction proceedings is approximately one to six months. 

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

The trademark owner may request that the Maritime and Commercial High Court (or other enforcement court) order a preliminary injunction to prohibit the use of the conflicting sign and claim disclosure and seizure of unlawfully marked products.

 To obtain a preliminary injunction order, the trademark owner must prove it likely that:

  • the acts against which the injunction is granted will infringe the trademark owner's right;
  • the alleged infringer is likely to perform such acts; and
  • the purpose of the proceedings will be lost if the trademark is to seek relief only by way of ordinary proceedings before the courts.

Preliminary injunction proceedings will typically consist of the same procedural steps as in ordinary court proceedings:

  • the plaintiff’s submission of a writ of summons;
  • the defendant’s statement of defence;
  • a preliminary oral hearing;
  • exchange of several written pleadings; and
  • an oral hearing with the possibility of interviewing witnesses.

However, under extraordinary circumstances, a preliminary injunction may be granted ex parte.

Due to the preliminary nature of the order, the trademark owner must commence subsequent infringement proceedings against the infringer within two weeks of the preliminary order, unless the matter is settled between the parties beforehand.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The trademark owner may claim:

  • an order for the infringer to cease the use of the conflicting sign;
  • the destruction and recall of unlawfully marked products;
  • disclosure of information about the infringing use of the conflicting sign; and
  • publication of the judgments.

The trademark owner is entitled to claim reasonable compensation for the unauthorised use of its trademark and compensation for any additional damages caused by the trademark infringement. The court considers the following when calculating the damages:

  • the trademark owner's loss of profit;
  • profit made by the infringer;
  • damage to the reputation of the trademark; and
  • potential distortion of the market.

Punitive damages are not allowed under Danish Law. Further, the trademark owner can claim compensation and damages only if the infringement is committed with intent or negligence.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Trademark owners can record their trademarks with Customs in order to enable it to detain shipments of goods suspected of infringing IP rights. Customs may intervene on its own initiative or following an application from a trademark owner. On detaining a shipment of goods, Customs will notify the respective trademark owner and provide details of the name and address of the importer and exporter, the number of detained goods and pictures of the detained goods. The trademark owner then has 10 days to obtain written consent for the destruction of goods from the importer. If the importer does not respond to the request, or objects to the destruction, the consignment will be released, unless the trademark owner brings civil proceedings within 10 days.

In relation to small consignments of goods (three items or less), the trademark owner may apply for the simplified procedure, where Customs will destroy the detained goods without contacting the trademark owner, unless the importer opposes the destruction.

Defence

What defences are available to infringers?

The following defences are available to an alleged infringer:

  • that the trademark has not been used commercially;
  • that the similarities in relation to the older 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, 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 coexistence in Sections 8 and 9 of the Trademarks Act are met; and
  • that the plaintiff’s trademark is invalid or should be revoked (eg, due to the trademark registration being in violation of the Trademarks Act, non-use or because the trademark has degenerated).

Appeal

What is the appeal procedure for infringement decisions?

Decisions from a first-instance court may be appealed to the high courts. Appeal to the Supreme Court in third instance usually requires permission from the Appeals Permission Board. However, a decision made by the Maritime and Commercial High Court may under certain circumstances be appealed directly to the Supreme Court (eg, if the case is potentially precedent setting or gives rise to an issue of general, public importance).

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