Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Denmark is the 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.

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 Patent and Trademark Office.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership of a trademark is determined on a first-to-use basis. 

Unregistered trademarks

What legal protections are available to unregistered trademarks?

The legal protection of unregistered trademarks is equal to the protection of registered trademarks.

Further, owners of unregistered trademarks may oppose the registration of trademarks that are identical or confusingly similar, provided that the unregistered mark is used in the course of trade in Denmark before the application for registration of the later mark is filed.

How are rights in unregistered marks established?

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

Are any special rights and protections afforded to owners of well-known and famous marks?

Owners of well-known and famous trademarks are afforded a broader scope of protection in relation to the similarity of the goods or services. The owner of a well-known trademark may also prohibit the use of the mark in relation to goods or services which are not identical or similar if such use will take unfair advantage of or be detrimental to the trademark’s distinctive character or reputation. 

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign trademark applications or registrations made in another Paris Convention member state may be used as a basis for claiming priority in Denmark.

Foreign trademarks are also recognised in relation to bad-faith applications. Accordingly, a trademark is precluded from registration if it is identical to or only insignificantly distinct from a trademark which, on the date of filing the application or, where appropriate, the date of the priority claimed in respect of the application, has commenced to be used abroad and is still in use there for goods or services which are identical or similar to those in respect of which registration of the later trademark is applied for, and on the date of filing the applicant had or should have had knowledge of the foreign trademark.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

Trademark registration gives the trademark owner the exclusive right to use the trademark in the course of trade for the goods and services for which the trademark is registered and to prohibit third parties from using an:

  • identical sign for identical goods or services; 
  • identical or similar sign for identical or similar goods and services if there is likelihood of confusion; or
  • identical or similar sign irrespective of whether it is used in relation to identical or similar goods or services which are identical with, similar to, or not similar to, those for which the trademark is registered when the trademark is well known and the use of the sign takes unfair advantage of or is detrimental to the trademark’s distinctive character or reputation.

The trademark owner may file oppositions or requests for cancellation and revocation against younger marks if the younger mark violates the trademark owner's rights.

Who may register trademarks?

Any private person, legal entity or organisation may register trademarks. However, there are some limitations for collective marks as well as guarantee and certification marks:

  • Guarantee and certification marks are registrable by legal entities such as public authorities, foundations, associations, companies and other organisations, provided that such person does not carry on a business involving the supply of goods or services of the kind guaranteed or certified.
  • Collective marks are registrable by associations and organisations whose members are businesses. The association or organisation concerned must be able to (in its own name):
  • have rights and obligations;
  • enter into contracts or other legal acts; and
  • act as party in a lawsuit.

What marks are registrable (including any non-traditional marks)?

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 the EU Trademark Directive (2015/2436/EC). Non-traditional marks such as taste and scent marks are now also registrable if the applicant can represent such marks clearly and precisely in such a way that the subject matter of the protection granted to the proprietor can be determined by the relevant authorities and the public. However, according to Patent and Trademark Office practice, the technology does not yet provide a method that allows the reproduction of a scent or taste mark clearly and precisely, and thus it is not possible to register them.

Can a mark acquire distinctiveness through use?

Yes.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

The Patent and Trademark Office will refuse a mark ex officio only on absolute grounds. The absolute grounds for refusal include:

  • if the mark is shaped into a sign which cannot constitute a trademark;
  • if the mark lacks distinctive character;
  • if the mark consists exclusively of signs or indications which may serve in trade to designate the kind, 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;
  • if the mark consists exclusively of signs or indications which are customary in the current language or established practices of trade to designate the goods or services;
  • if the mark consists exclusively of:
  • a shape or other characteristic resulting from the nature of the product;
  • a shape or other characteristic of the product which is necessary to obtain a technical result; or
  • a shape or other characteristic which adds substantial value to the product.
  • if the mark violates the law, public order or morality;
  • if the mark is of such a nature as to deceive the public (eg, as to the nature, quality or geographical origin of the goods or services); 
  • if the mark has not been authorised by the competent authorities in accordance with the Paris Convention or includes badges, emblems or escutcheons of public interest, unless the appropriate authority has given its consent to their registration.
  • if the mark is banned from registration as a trademark pursuant to applicable law or international agreements to which the European Union or Denmark are parties and that provide protection for designations of origin and geographical indications;
  • if the mark is precluded for registration as a trademark pursuant to applicable law or international agreements to which the European Union is party and which provide protection to traditional appellations for wine;
  • if the mark is precluded from registration as a trademark pursuant to applicable law or international agreements to which the European Union is party and which provide protection of guaranteed traditional specialities; or
  • if the mark consists of, or reproduces in its essential elements, an earlier plant variety denomination protected by plant variety rights and relates to plant varieties of the same or closely related species.

A mark will not be refused ex officio on relative grounds for refusal (ie, prior third-party rights). The Patent and Trademark Office may refuse a mark only upon opposition of a third party on relative grounds. The relative grounds for refusal include:

  • if the trademark is identical to an earlier trademark and the goods or services for which the trademark is applied are identical to the goods and services for which the earlier trademark is protected;
  • if there exists a likelihood of confusion on the part of the public because the mark is identical or similar to an earlier trademark and the goods or services covered by the trademark are identical or similar;
  • if the mark is identical or similar to an earlier trademark irrespective of whether the goods or services for which it is applied are identical, similar or not similar to those for which the earlier trademark is registered, where the earlier trademark has a reputation in Denmark in respect of which registration is applied for or, in the case of an EU trademark, has a reputation in the European Union and the use of the later trademark without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trademark; or
  • an agent or representative of the proprietor of the trademark applies to register the trademark in its own name without the proprietor's consent, unless the agent or representative justifies its actions.

Are collective and certification marks registrable? If so, under what conditions?

Yes, collective marks and guarantee and certification marks are registrable. The conditions for registering collective and certification marks are similar to the registration requirements for ordinary trademarks. However, some special conditions apply for collective marks:

  • The regulations governing the use of the mark must be submitted.
  • The regulations governing the use of the mark must specify at least:
  • the persons authorised to use the collective mark;
  • the conditions for membership of the organisation or association concerned; and
  • the conditions for the use of the mark, including penalties.
  • The regulation governing the use of the mark must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association concerned, provided that they fulfil all of the other conditions of the regulations.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Providing a power of attorney is not required if the agent is an attorney at law or another IP adviser (including patent and trademark attorneys) who fulfils one of the below-mentioned criteria:

•is employed by a firm which for the preceding three years has represented applicants and owners with applications and maintenance of patents, trademarks, designs and utility models;

•declares that he or she is on European Patent Office or the EU Intellectual Property Office lists of professional representatives;

•declares that he or she has worked with IP rights and acted as an agent on behalf of applicants or owners in relation to applications or maintenance of patents, trademarks, designs or utility models for three consecutive years before the submission of the application; or

•refers to a previously submitted general power of attorney.

Other agents that do not fulfil the abovementioned requirements must submit a power of attorney with the application. Notarisation or legalisation is not required.

What information and documentation must be submitted in a trademark registration application?

The following must be included:

  • 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).

What rules govern the representation of the mark in the application?

The representation of the mark in the application is governed by the Trademark Act, the practices of the courts and the Patent and Trademark Office.

The main rule is that the representation of the mark must be represented 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.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

Yes.

What are the application fees?

The application fee is Dkr2,000 for one class. The first additional class will cost Dkr200, with any additional classes thereafter costing Dkr600 per class.

Priority

How are priority rights claimed?

Priority may be claimed when completing the application form. The applicant may claim priority from an earlier application or registration in another member state of the Paris Convention, World Trademark Organisation, European Union or a state which 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 a 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. 

Further, the applicant may claim priority from the date that a trademark has been used for the first time for goods displayed at an official or officially recognised international exhibition if the application is filed no later than six months after such use. When applying for exhibition priority, the applicant must state:

  • the priority application date;
  • the priority exhibition name and country; and
  • which goods in the Danish application are covered by the priority claim.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches conducted by the Patent and Trademark Office are not required before filing; however, they are available. The costs depend on classes included in the search and are based on time spent.

The Patent and Trademark Office provides a searchable database on its website, which is available to the public free of charge. 

Examination

What factors does the authority consider in its examination of the application?

The Patent and Trademark Office examines the following factors:

  • formal requirements;
  • the classification of goods and services;
  • whether the mark has distinctiveness;
  • whether the mark is deceptive;
  • whether the mark violates other laws, public order or morals;
  • whether the mark includes a coat of arms or a national flag;whether the mark is confusingly similar to prior trademark rights in the trademark database;
  • whether the company register contains trade names which are identical or almost identical to the mark; and
  • whether the mark infringes another person's copyrights.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes. The Patent and Trademark Office checks for relative grounds for refusal and provides the applicant with a search report. The report is merely for information purposes as registration is not refused on relative grounds. However, the search report may prompt the applicant to withdraw the application or amend the classification of goods and services for which it wishes to register the mark.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Yes. The Patent and Trademark Office allows the applicant to rectify the application within two or four months and it is usually explained in a letter 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.

Can rejected applications be appealed? If so, what procedures apply?

Yes. Rejected applications may be appealed to the Board of Appeals for Patents and Trademarks within two months from the decision. The fee for an appeal is Dkr4,000. The appeal procedure is conducted in writing. After the appellant has filed the notice of appeal, the Board of Appeal obtains the Patent and Trademark Office’s re-assessment on the case. The appellant then has one month in which 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.

Registration

When does a trademark registration formally come into effect?

If the application meets all the requirements and no oppositions are filed by third parties, or it is finally decided that the application is sustained despite opposition, the Patent and Trademark Office will register the trademark and publish a notice of the registration in the Trademark Journal.

What is the term of protection and how can a registration be renewed?

The term of protection is 10 years from the date of application. 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.

What registration fees apply?

Application fees The application fee is Dkr2,000 for one class. The first additional class will cost Dkr200, with any additional classes thereafter costing Dkr600 per class.

Renewal fees For renewals due before 1 July 2019, the renewal fee is Dkr2,350 for three classes, with an extra fee of Dkr600 for each additional class. Payment after the expiry date will incur an additional 20% fee.

For renewals due on 1 July 2019 or thereafter, the renewal fee is Dkr2,000 for one class, the first additional class will cost Dkr200 and any additional class thereafter will cost Dkr600. Payment after the expiry date will incur an additional 20% fee.

What is the usual timeframe from filing to registration?

Approximately four to 12 weeks.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes. Once notice of the trademark registration is published in the Trademark Journal, third parties may oppose the registration within a two-month opposition period. Oppositions must be filed with the Patent and Trademark Office and must specify the grounds on which it is filed. The trademark registration owner will get an opportunity to file a reply statement to the opposition, after which the Patent and Trademark Office will decide if further statements from the parties are needed. The number of statements may differ depending on the complexity of the matter. The Patent and Trademark Office's decision in opposition proceedings may be:

  • to reject the opposition that a disclaimer be added to the mark or that the list of goods and services of the mark be reduced so that the marks may coexist; or
  • to delete the opposed mark from the register in full.

Any third party may oppose a registration on the absolute grounds that the trademark:

  • is a sign which cannot constitute a trademark;
  • lacks distinctive character;
  • 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;
  • consists exclusively of signs which are customary in the current language or established practices of trade to designate the goods or services;
  • is a sign which consists exclusively of:
  • a shape or other characteristic which results from the nature of the goods;
  • a shape or other characteristic of the goods which is necessary to obtain a technical result; or
  • a shape or other characteristic which adds substantial value to the goods;
  • violates the law, public order or morality;
  • may deceive the public as to the nature, quality or geographical origin of the goods or services; or
  • has not been authorised by the competent authorities in accordance with the Paris Convention or includes badges, emblems or escutcheons of public interest, unless the appropriate authority has given its consent to their registration.
  • is excluded from registration pursuant to EU legislation, national law or international agreements to which the European Union or Denmark are parties, providing for protection of designations of origin and geographical indications;
  • is excluded from registration pursuant to EU legislation or international agreements to which the European Union is party, providing for protection of traditional terms for wine;
  • is excluded from registration pursuant to EU legislation or international agreements to which the European Union is party, providing for protection of traditional specialities guaranteed;
  • consists of, or reproduces in their essential elements, an earlier plant variety denomination registered in accordance with EU legislation or national law, or international agreements to which the European Union or Denmark are parties, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species.

Further, any third party may oppose a trademark registration on the absolute ground that the application was made in bad faith by the applicant.

Any EU member state may provide that such a trademark is not to be registered

Only third parties that own or hold a prior right may oppose the registration of a trademark on the relative grounds that the trademark:

  • is identical to an earlier mark for identical goods or services;
  • is identical or similar to an earlier mark 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;
  • is identical or similar to an earlier mark which is well known and the trademark registration 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 mark;
  • may be construed as a symbol that, at the time of the application, was being used by a third party in Denmark or abroad and is still in use, if the applicant was acting in bad faith at the time of the application;
  • may be construed as another party’s company name;
  • may be construed as a personal name to which another party has a legal title, or which without permission contains a distinctive name of or a picture of the real property of another party;
  • may be construed as a portrait of someone who is not long deceased; 
  • may be construed as a distinctive title, a protected literary or artistic work of another party or which infringes the copyright in such a work or the right to a photograph of another party or the industrial property rights of another party; or
  • an agent or representative of the proprietor of the trademark applies to register the mark in its own name without the proprietor's consent, unless the agent or representative justifies its actions.

What is the usual timeframe for opposition proceedings?

Approximately 12 to 18 months. 

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes. Opposition decisions may be appealed to the Board of Appeals for Patents and Trademarks within two months from the decision. The fee for an appeal is Dkr4,000. The appeal procedure is conducted in writing. Each party submits one pleading, after which the Board of Appeals obtains the Patent and Trademark Office’s opinion on the case. The parties then have 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 Appeals may be brought before the ordinary courts within two months from the decision.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes. 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 Patent and Trademark 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 trademark owner to document genuine use.

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

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark registration can be revoked if it has been registered in contravention of the Trademarks Act. Revocation may be based on any of the absolute or relative grounds, including:

  • loss of distinctiveness;
  • infringement of third-party rights; and
  • incorrect registration.

Further, a trademark may be revoked if it has become a common name in the trade of goods or services for which it has been registered (degeneration) or if the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services. Finally, the trademark may be cancelled on the grounds of non-use.

Who may file a request for revocation and what is the statute of limitations for filing a request?

Any natural or legal entity may file a request for revocation with the Patent and Trademark Office. Revocation proceedings may also be brought before the courts, but this requires that the plaintiff have sufficient legal interest. There is no statute of limitation for filing a request for revocation. 

What are the evidentiary and procedural requirements for revocation proceedings?

The procedure in revocation proceedings is usually written and the parties must document their claims. The Patent and Trademark Office sets a deadline for the trademark owner's response to the revocation pleading. Depending on the complexity of the cases, the parties may sometimes file several statements to explain the facts of the case and document their claims. The Patent and Trademark Office renders a decision when the matter has been sufficiently documented.

In revocation actions before the regular courts, the procedural rules in the Administration of Justice Act apply. 

Appeal

What is the appeal procedure for cancellations or revocations?

Decisions of the Patent and Trademark Office in revocation or cancellation proceedings may be appealed to the Board of Appeals for Patents and Trademarks within two months from the decision. The fee for an appeal is Dkr4,000. The appeal procedure is conducted in writing. The appellant submits the notice of appeal, after which the Board of Appeals obtains the Patent and Trademark Office’s opinion 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. The appeal has suspensive effect.

The decision of the Board of Appeals may be brought before the ordinary courts.

Surrender

What is the procedure for surrendering a trademark registration?

A trademark owner may surrender a trademark registration at any time, wholly or in part, by written request to the Patent and Trademark Office.

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 can file a trademark infringement action.

A licensee can file a trademark infringement action if the trademark owner has given their 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 if the trademark owner after a formal request has refrained from taking such action within a reasonable time.

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

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 to 18 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:

  • they have the trademark right for which relief is sought;
  • the alleged infringer's behaviour necessitates the injunction order; 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 owner of a registered trademark may prevent third parties from bringing goods into Danish customs territory for commercial purposes without the goods being released for sale if such goods (including their packaging) are imported from a non-EU/EEA country and bear a trademark without the proprietor’s authorisation, which is identical to the trademark registered for such goods. The proprietor has the same rights if a trademark cannot be distinguished from its prior mark.

Further, a trademark owner may prevent a third party from placing their trademark on labels and packaging and prevent labels and packaging bearing the trademark from being offered for sale, marketed or stored or imported or exported as part of a potential infringement.

If a trademark is registered under the name of an agent of the trademark owner, or a representative thereof, without the authorisation of the trademark owner, they may prevent the agent or representative from using the trademark or having the trademark assigned to them.

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 10(3) and 10b(3) 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).

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

The assignment of trademark rights is governed by the Trademarks Act and by Danish contract law in general. Trademarks may be sold and bought 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 anybody transfers his or her business, the right to the trademarks passes automatically to the transferee, unless otherwise agreed or deemed to be agreed.

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

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademark licensing is governed by the Trademarks Act and by Danish contract law in general. A trademark may be licensed for all or some of the goods or services for which it is registered and for the whole or part of the country. The licence may be exclusive or non-exclusive.

The legal effect of a licensing agreement does not depend on its entry into the trademark register. However, the entry of the new owner in the register is highly recommended for notoriety and enforcement purposes. The Patent and Trademark Office will, at the request of the trademark owner or pledgee, enter a note to that effect in the trademark register.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Trademark licensing agreements 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;
  • provisions on the licence fee (eg, calculation of royalties, minimum and maximum fees, reports and audits);
  • provisions on the enforcement of the licensed trademark (who defends the trademark in case of third-party infringement);
  • a no-challenge clause; and
  • quality-control clauses.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

Yes, a security interest can be registered over a trademark as trademarks can be pledged in accordance with the Danish law of mortgage and pledges. If the right to a registered trademark has been pledged, the Patent and Trademark Office shall, at the request of the trademark owner or pledgee, enter a note to that effect in the trademark register. However, the legal effect of a pledge agreement does not depend on its entry into the register.

Related rights

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, recent 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. 

Online issues

Trademarks online and domain names

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

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

A trademark owner may use its trademark as a domain name and it will 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.