1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The primary source is the Danish Trademark Act and the EU Trademark Regulation.
1.2 How do trademark rights arise (ie, through use or registration)?
In Denmark, trademark rights may be acquired both through use and through registration. In case of establishing trademark rights through use, such use must be beyond mere local use.
1.3 What is the statutory or other source of the trademark registration scheme?
The Danish Trademark Act is the primary source of the registration scheme, as well as EU directives. Further, the official guidelines from the Danish Patent and Trademark Office apply.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
A registered trademark may consist of any character – in particular, words, including personal names, or images, letters, numbers, colours, the shape of a product or its packaging, sounds, motion, patterns and similar.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
A relevant designation or other identifier will be capable of functioning as a trademark as long as it is suitable to distinguish the holder's goods or services from those of others, and can be reproduced in the Trademark Register in a way that enables the competent authorities and the public to determine the scope of trademark protection.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
There are no standard designations or other identifiers which per se are considered as ineligible to function as trademarks. Accordingly, assessment shall be made on a case-by-case basis to check whether a given designation or other identifier fulfils the abovementioned criteria to function as a trademark.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Danish Patent and Trademark Office (DKPTO).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The official trademark application fee is DKK2,000 for one class and DKK2,200 for two classes. Each additional class is subject to an additional fee of DKK600 per class. There are no additional mandatory fees during prosecution or upon issuance of a registration certificate; however, an applicant may pay DKK700 in order to receive a reasoned search report from the DKPTO.
3.3 Does the trademark office use the Nice Classification scheme?
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Protection is obtained for those goods and/or services indicated in the list of goods and services. Accordingly, it is necessary to identify the specific goods or services for which the mark will be used.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
No documentation of such intention is required; therefore, it is possible to file a trademark application without a bona fide intention to use the trademark.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Yes, and search results are provided to the applicant for information purposes. However, trademarks are not ex officio refused registration by the DKPTO on relative grounds.
3.7 What types of examinations does the trademark office perform other than relative examination?
In addition to checking the formal requirements relating to a trademark application, the DKPTO will examine the application on absolute grounds.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes. The DKPTO also examines whether the mark:
- is deceptive;
- violates other laws, public order or morals;
- includes a coat of arms or a national flag; or
- is protected as a geographical indication.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
3.12 How much time does it typically take from filing an application to the first office action?
Usually, approximately two months.
3.13 How much time does it typically take from filing an application to publication?
Approximately three to four months.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
A registration refusal by the Danish Patent and Trademark Office (DKPTO) may be appealed to the Danish Board of Appeal for Patents and Trademarks within two months of the refusal date.
4.2 What is the procedure for appealing a trademark office refusal?
Upon receiving notice of appeal, the Board of Appeal will obtain the DKPTO's reassessment of the case. The appellant is then given one month to respond to any such comments from the DKPTO. Usually, the appeal procedure is conducted in writing. In certain cases, an oral hearing may be allowed, if requested by the parties. The appeal has suspensive effect.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
Yes, decisions of the Board of Appeal can be challenged before the ordinary courts.
5.1 Can a third party oppose a trademark application?
5.2 Who has standing to oppose a trademark application?
Any natural or legal person that claims its IP rights are infringed by a trademark application may file a notice of opposition.
5.3 What is the timeframe for opposing a trademark application?
A trademark application is subject to opposition for a period of two months from publication in the Trademark Journal.
5.4 Which body hears oppositions?
Trademark opposition matters are handled by the Danish Patent and Trademark Office (DKPTO).
5.5 What is the process by which an opposition proceeds?
An opposition notice must be submitted to the DKPTO in writing within the abovementioned timeframe, together with relevant grounds and payment of the applicable official fee.
Upon receipt of the opposition notice, the DKPTO will set a deadline for the trademark owner's response. After receipt of the same, the DKPTO will decide whether the argumentation and documentation provided are sufficient to render a decision. In complex cases, the parties may be allowed to file additional statements to explain the facts of the case and document their claims.
The DKPTO renders its decision once both parties have had the opportunity to submit their arguments and documentation.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Decisions of the DKPTO can be appealed in writing to the Board of Appeal for Patents and Trademarks within two months of the decision date. An appeal is subject to payment of the applicable official fee. Each party submits one pleading, after which the Board of Appeal obtains the DKPTO's reassessment of the case. The parties then have one month to respond by submitting further written comments. As a main rule, the proceedings are conducted in writing; however, in certain cases an oral hearing may be allowed, if requested by the parties.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered trademarks enjoy the same level of protection as registered trademarks, provided that establishment of trademark rights can be documented by the trademark owner.
6.2 What legal rights are conferred by a trademark registration?
Trademark registration does not provide the trademark owner with any additional legal rights compared to those related to unregistered marks. However, registration of a trademark makes it easier to indicate the time of establishment of trademark right and may provide for a broader scope of protection, depending on the actual list of goods or services – especially if the trademark registration is not yet subject to a use requirement. In case of an unregistered trademark, the scope of protection is limited to the specific goods or services for which the trademark is used.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The trademark owner may claim:
- reasonable compensation for the unauthorised use of its trademark and compensation for any additional damages caused by the infringement, provided that the infringement was committed with negligence or intent;
- discretionary compensation for market distortion;
- recall and/or destruction of infringing products;
- an order for the infringer to cease the infringing use;
- disclosure of information about the infringing use, including the scope of the same;
- cancellation or revocation of the infringing trademark registration; and
- publication of the court judgment.
7.2 What remedies are available against trademark dilution?
The trademark owner may claim the same remedies for trademark dilution as for trademark infringement (as above).
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
7.4 What is the procedure for pursuing claims for trademark infringement?
A trademark owner has several options when enforcing its trademarks rights:
- It may pursue an administrative claim before the Danish Patent and Trademark Office (DKPTO) for infringing trademark applications or registrations (ie, opposition, cancellation and revocation procedures.
- It may pursue a civil claim against the infringing party before the competent court. This option may variously include:
- a request to secure evidence at the infringer's premises;
- a request for a preliminary injunction to prohibit the infringing use and seizure of the infringing goods; and
- ordinary court proceedings.
- The first and second options above are preliminary actions and require subsequent initiation of legal proceedings on the merits, unless the matter is settled between the parties beforehand. All three options require submission of a written request followed by relevant arguments and documentation, along with payment of the court fee. Both parties are given the opportunity to submit their arguments and documentation before the court renders a decision.
- It may pursue a claim under criminal proceedings, initiated by the relevant prosecuting authority. The trademark owner is given the opportunity to submit its argumentation and a request for damages; however, it is not considered a party to the criminal proceedings and has limited opportunity to affect the course of the case.
7.5 What typical defences are available to a defendant in trademark litigation?
The following defences are available to a defendant:
- There is no likelihood of confusion between the respective trademarks or designations;
- The relevant trademark has not been used commercially;
- The relevant trademark has been used by the defendant in accordance with honest business practices – for instance, the right to use its own name and address, or where use of the trademark is necessary for the intended purpose of the goods (spare parts);
- The trademarks or designations in question can coexist under the Trademarks Act;
- The contested trademark or designation was used before the plaintiff acquired its trademark rights; or
- The plaintiff's trademark is invalid, or should be cancelled or revoked.
7.6 What is the procedure for appealing a decision in trademark litigation?
Decisions of the DKPTO may be appealed to the Board of Appeal for Patents and Trademarks, while decisions of the latter can be appealed to a competent first-instance court.
Decisions of a first-instance court may be appealed to the high courts. A third-instance appeal to the Supreme Court usually requires permission from the Appeals Permission Board. In certain cases – for instance, if the case is potentially precedent setting or gives rise to an issue of general public importance – a decision issued by the Maritime and Commercial High Court, which is a specialised IP court, may be appealed directly to the Supreme Court. An appeal is subject to a deadline of four weeks from the date of the relevant decision.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The term of protection is 10 years from the date of application. A trademark registration may be renewed for further 10-year periods from the expiry of the registration period.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
Renewal is subject only to payment of a renewal fee.
8.3 What are the grounds for cancelling a trademark registration?
A trademark registration may be cancelled due to non-use or revoked if it was registered contrary to the Trademark Act. Revocation may be based on any of the absolute or relative grounds for refusal, including the following:
- The trademark infringes third-party rights;
- The trademark has become a common name in the trade as regards the goods or services for which it has been registered; or
- The trademark is or has become misleading to the public, particularly as to the nature, quality or geographical origin of the goods or services.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The Danish Patent and Trademark Office (DKPTO) may initiate revocation proceedings before the competent court only in case of absolute hindrances.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Any natural or legal person may file a request for cancellation or revocation with the DKPTO. Legal revocation or cancellation proceedings before a competent court can be initiated only by a natural or legal person with a sufficient interest in the matter.
A revocation or cancellation request must be submitted to the competent authority (the court or the DKPTO) in writing by providing relevant grounds for such request and payment of the applicable official fee.
Upon receipt of such request, the competent authority will set a deadline for receipt of the trademark owner's response to the revocation pleading. Depending on the complexity of the cases, the parties may be allowed to file several statements to explain the facts and document their claims. The competent authority will render a decision when both parties have had a chance to submit their arguments at least once.
8.6 What is the procedure for appealing a decision cancelling a registration?
A revocation or cancellation decision of the DKPTO may be appealed in writing to the Board of Appeal for Patents and Trademarks within two months of the decision date. Decisions of a competent court follow the regular procedure for court appeals – that is, as a main rule, within four weeks of the decision date.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
9.2 Must trademark licences be recorded with the trademark office or other governing body?
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Foreign trademarks may be enforced in case of bad-faith applications in accordance with the Trademark Act and the Paris Convention. In certain cases, foreign trademarks may also be enforced under the Danish Marketing Practices Act, provided that the claimed infringement violates good business practice.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.