The Danish trademark registration landscape revolves, for obvious reasons, around the Danish Patent and Trademark Office (DKPTO), which is a competent, efficient and consistent authority.
The Danish enforcement landscape, on the other hand, is much more complex, and as this chapter explains, trademark rights may be enforced in a number of ways in Denmark. Obviously, the Danish courts are the cornerstone of the Danish enforcement landscape, but they do not work alone. For instance, practitioners consider the Danish Complaints Board for Domain Names to be a great alternative to the courts, when trademark disputes involve domain names.
II LEGAL FRAMEWORK
The principal Danish legislation related to trademarks consists of the new Trademarks Act,2 which came into force on 1 January 2019, and which, inter alia, serves to incorporate the Trademarks Directive3 into Danish law. In addition, the Registration Order4 sets out supplementary provisions pertaining primarily to the application for and registration of trademarks in Denmark. Denmark has acceded to the TRIPS Agreement.5 Also, Denmark has acceded to the WIPO Convention and is a contracting party to numerous WIPO-administered treaties, including, by way of example, the Madrid Protocol6 and the Paris Convention.7
The DKPTO forms part of the Danish Ministry of Industry, Business and Financial Affairs.8 It works to help companies protect and exploit their ideas and inventions and thus aims to be the Danish centre of intellectual property.9 One of the core tasks of the DKPTO encompasses the activities undertaken in relation to trademarks, including trademark registration in particular. The powers of the DKPTO are primarily set out in the Trademarks Act.
Danish Complaints Board for Domain Names
The Danish Complaints Board for Domain Names (the Complaints Board) hears cases concerning the right to .dk domain names.10 The Complaints Board claims to be an easy, faster and cheaper alternative to the courts in domain name disputes,11 and most practitioners would probably agree with this claim. The Complaints Board may, inter alia, decide to suspend, delete or transfer the .dk domain name that is subject to a complaint.12
DK Hostmaster maintains the Danish internet infrastructure and administers the database of all .dk domain names on behalf of the Danish government.13
Although DK Hostmaster does not hear domain name complaints, such complaints may nevertheless, in certain special situations, be submitted to DK Hostmaster.14 These special situations include, inter alia, matters concerning typosquatting.15 Moreover, DK Hostmaster is competent where there is an obvious risk of economic crime, compromising IT equipment or content of a highly offensive nature.16 Also, DK Hostmaster may act if the domain name is used in connection with manifestly illegal acts or omissions that infringe substantial considerations of security or public interest.17 In such cases, DK Hostmaster may generally suspend and, subsequently, block or delete a domain name.18
The Danish Business Authority
The Danish Business Authority (the Authority) registers the names of companies, including the names of limited companies and private limited companies. All company names must be registered with the Authority.19 When a company name is registered, the Authority examines whether an identical name is registered. However, the Authority does not examine whether similar names are registered, let alone if identical or confusingly similar trademarks have been registered.20 As such, the registration of a company name with the Authority does not entail any extinctive acquisition of rights. The Authority does not hear complaints pertaining to the registration of business names. However, if a court of law has concluded that a company name has been registered in violation of Section 2 of the Danish Companies Act,21 the Authority will remove the name from the register.22
iii Substantive law
Registered trademarks are, inter alia, protected pursuant to the Danish Trademarks Act, namely Section 4(2), which implements Article 10(2)(a)-(b) of the Trademarks Directive, and which, pursuant to Subsections 4(2)(1) and 4(2)(2), entitles the proprietor of a trademark to prohibit any person not having consent from using any sign in the course of trade, if the sign is (1) identical to the trademark and is used for identical goods and services, or (2) identical or similar to the trademark, and the goods or services are identical or similar, if there exists a likelihood of confusion, including a likelihood of association with the trademark.
Reputed trademarks enjoy, inter alia, protection pursuant to Section 4(2)(3) of the Trademarks Act, which implements Article 10(2)(c) of the Trademarks Directive, and which stipulates that, regardless of the limitation in Section 4(2)(2) to identical or similar goods and services, the trademark proprietor may also prohibit use for goods or services that are not similar, if the trademark has a reputation in Denmark, and if use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trademark.
Collective marks and certification marks
In Denmark, trademark rights may also be acquired through use in the course of trade. This follows explicitly from Section 3(1)(3) of the Trademarks Act. Under the Former Trademarks Act,25 which was in force until 31 December 2018, very little was required of the use in terms of intensity, scope, etc., meaning that the use requirement was interpreted leniently by the Danish courts. For instance, even use within a group of companies could qualify as use for the purposes of Section 3(1)(2) of the Former Trademarks Act. However, Section 3(1)(3) of the Trademarks Act now requires that the use must be of more than mere local character. Regardless, the Danish use requirement is still lenient compared to other Member States.
Well-known trademarks – within the meaning of Article 6(b) of the Paris Convention – are, inter alia, protected pursuant to Sections 3(2) and 15(2)(3) of the Trademarks Act.
The first provision ensures that proprietors of well-known trademarks may also invoke Section 4 of the Trademarks Act, among other provisions, meaning, inter alia, that the exclusive rights conferred on the proprietor of a trademark also extend to well-known trademarks.
The latter provision ensures that a mark that is identical or confusingly similar to an earlier trademark that is ‘well-known in this country in the meaning stipulated in Article 6(b) of the Paris Convention’ is not registrable. Section 15(2)(3) essentially implements Article 5(2)(d) of the Trademarks Directive.
Under the Former Trademarks Act, additional protection was also extended explicitly to reputed well-known trademarks. To be more specific, Section 15(3)(2) stated that a mark was not registrable if it was identical or similar to a well-known trademark within the meaning of Section 15(2)(4) of the Former Trademarks Act, even if it was applied for registration for different goods and services than those for which the mark was well-known, if the use of the earlier mark would imply that there was a connection between the marks, and the use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trademark. This provision was worded in accordance with Article 16(3) of the TRIPS Agreement.26 The wording of the Trademarks Act does not seem to extend similar protection to reputed well-known trademarks, which is slightly odd. Even so, it may be argued that Section 3(2) ensures that such protection is still in place.
Company names may be registered as trademarks in Denmark. Moreover, if use of a company name qualifies as trademark use, trademark rights may also be acquired through use. Outside the world of trademarks, company names are primarily protected pursuant to Section 2 of the Danish Companies Act. Most importantly, Section 2(2) essentially states that company names must differ from other company names registered in the Danish Business Authority’s IT system and must not include a family name, company name, distinctive name for real estate, trademark, trade name and the like, which is not the (intellectual) property of the company, or that may cause confusion on the part of the public.
Trade names and business names
As with company names, trade names and business names may qualify for trademark protection without trademark registration, if trademark rights may be said to have been acquired through use. In addition, Section 22 of the Danish Marketing Practices Act,27 which came into force on 1 July 2017, stipulates that no person carrying on a trade or business shall make use of any trademark or other distinctive business mark to which that person is not legally entitled or make use of his or her own distinctive business marks in a manner likely to cause such marks to be confused with those of other traders.
The provision is intended to offer supplemental protection to Section 4 of the Trademarks Act for marks – or use of marks – that, for whatever reason, do not qualify for trademark protection. As such, the provision is often invoked in trademark disputes. However, at least until the new Trademarks Act came into force, the provision appears to have been gradually ‘outmatched’ by the Trademarks Act, the Domain Names Act, the Companies Act and other specific legislation.28 Section 22 is a national Danish rule that does not implement or reflect EU legislation.29
The Danish Trademarks Act protects geographical indications in various ways. Sections 10 and 13 stand out. Pursuant to Section 10(2), which implements Article 14(1)(b) of the Trademarks Directive, the proprietor of a trademark shall not be entitled to prohibit a third party from using, in the course of trade, indications concerning geographical origin.
Moreover, pursuant to Section 13(1)(3), which implements Article 4(1)(c) of the Directive, a trademark lacks distinctive character and therefore shall not be subject to registration, if it consists exclusively of signs or indications that may serve, in trade, to designate the geographical origin.
Like many of the intellectual property rights described above, domain names may qualify for trademark protection. Moreover, a domain name may be equivalent to a company name, or it may be protected pursuant to the Danish Marketing Practices Act as a trade name or business name. It may also be a graphical indication. Additionally, the Domain Names Act offers primary protection for domain names or, if domain names are protected by other legislation, supplemental protection. Pursuant to Section 25 of the Domain Names Act, domain name registrants must not register and use internet domain names contrary to good domain name practice.30 Moreover, registrants must not register and maintain registrations of internet domain names solely for the purpose of selling or renting such domain names to other parties.31 Section 25 serves as a general clause within the area of domain names and, according to the preparatory works, allows for decision-making out of consideration of fairness.32
III REGISTRATION OF MARKS
i Inherent registrability
In Denmark, trademark applications are filed with the DKPTO. Online application is available, and an application may be filed in English.33 In the latter case, the application should be accompanied by a Danish translation of the list of goods and services.34 There is no requirement to appoint a representative in Denmark.
The DKPTO will commence processing of the application once the application fee has been paid.35 The application fee for an application that covers one class is currently 2,000 kroner. For every additional class, an additional fee of 600 kroner is payable, albeit the fee for the first additional class is only 200 kroner.36 Additional fees, as of 1 January 2019, may be found on the DKPTO website.37
The DKPTO examines whether the formal requirements are satisfied. Also, and perhaps even more interestingly, the DKPTO examines whether there are any absolute grounds for refusing the application.38
If the DKPTO finds that the application does not satisfy the formal requirements, or that there are absolute grounds for refusing the application, the DKPTO will inform the applicant thereof. The applicant may then submit its observations, or it may apply for an extension within two months.39 If no observations are received in due time, or if the applicant fails to apply for an extension, the application is rejected, whether partially or in its entirety.40
If no absolute grounds are identified, and all formal requirements are satisfied, the DKPTO proceeds to publish the application (not the registration).41
ii Prior rights
The DKPTO first examines for various prior rights in the form of a search report.42 However, applicants may request that no search report is generated,43 therefore allowing for fast-track applications. As a third option, applicants may now request that a reasoned search report be generated.44
If the applicant does not request that the search report is omitted, the DKPTO will search for prior applied and registered trademarks. And if the applicant has requested a reasoned search report, the report will also include the immediate assessment of the DKPTO. It is important to stress that the regular search reports as well as the reasoned search reports are merely intended to be informative, and that they should not be used as a basis for decisions.
iii Inter partes proceedings
Historically, anyone could oppose a trademark registration (this was when oppositions targeted registrations rather than applications) in Denmark on the basis of absolute grounds for refusal, while no particular legal interest was required.45 This is no longer the case. Now, a trademark application may only be opposed on the basis of relative grounds for refusal.46
Oppositions claiming relative grounds for refusal may only be submitted by the proprietor of the prior rights on which the opposition is based.47 An opposition must be filed within two months of the date of publication.48 This is an absolute deadline.49
In Denmark, revocation and invalidation actions may be submitted to the DKPTO pursuant to Section 34 of the Trademarks Act or, pursuant to Section 33 of the Trademarks Act, to the Danish courts. The starting point is that anyone may apply for revocation or invalidation.52 However, as is the case with regard to oppositions, it is not possible to base an application on third-party rights.53 Moreover, the application must be reasoned, and the applicant must pay a fee of 2,500 kroner, which may be paid in a number of ways.54 If an application is lodged with the Danish courts, the parties will be subject to the rules pertaining to civil procedures.
Any decision rendered by the DKPTO may be appealed to the Board of Appeals for Patents and Trademarks within two months.55 Moreover, decisions rendered by the DKPTO and the Board of Appeals for Patents and Trademarks may be submitted to the courts.56
IV CIVIL LITIGATION
Trials concerning national trademarks may, at first instance, be submitted to the city courts as well as the Maritime and Commercial High Court, although either party to such a dispute may demand that the case be referred to the Maritime and Commercial High Court.57
Disputes concerning EU trademarks must, at first instance, be submitted to the Maritime and Commercial High Court, which has exclusive jurisdiction in such matters.58
Judgments in trademark disputes rendered by the city courts may be appealed to the high courts.59 Certain monetary thresholds apply, but these thresholds are generally not relevant to trademark disputes.
Judgments rendered by the Maritime and Commercial High Court in trademark disputes may be appealed to the high courts.60 Also, such judgments may be appealed to the Supreme Court if the matter is of principal relevance and is of general significance to the administration of justice and the legal development or has a significant social scope; or if other special reasons justify that the case be heard by the Supreme Court in the second instance.61
In addition to ordinary trials, trademark disputes may also be submitted to the courts in the form of preliminary injunction actions.62 An action for preliminary measures in a trademark dispute may submitted, even if a trial concerning the same dispute is pending. Pursuant to Section 43b of the Trademarks Act, such actions may be submitted to the city courts or the Maritime and Commercial High Court, although either party to such a dispute may demand that the case be referred to the Maritime and Commercial High Court.63 Section 43c of the Trademarks Act, on the other hand, stipulates that if the preliminary measures are to have effect in all EU Member States, an action for preliminary measures must be submitted to the Maritime and Commercial High Court.
Decisions on preliminary measures rendered by the city courts may be appealed to the high courts, whereas decisions on such measures rendered by the Maritime and Commercial High Court must be appealed to the high courts.64 Decisions on preliminary measures with effect in all Member States rendered by the Maritime and Commercial High Court must, however, be appealed to the Eastern High Court.65 If some sort of preliminary measure is awarded, a trial on the merits must be submitted within 14 days.66
ii Pre-action conduct
Before civil litigation is commenced, the infringed trademark proprietor will often approach the infringer, often in the form of a cease and desist letter or similar. Obviously, such a letter serves the purpose of avoiding legal proceedings. However, under Danish law there are other advantages to approaching the infringer in this way. First, a cease and desist letter ensures that the infringer may no longer be said to act in good faith.67 Second, if the trademark proprietor does not approach the infringer, the proprietor risks not being awarded (full) costs, even if the subsequent action for preliminary measures or trial is successful.
No specific legislation covers the sending of cease of desist letters. However, pursuant to Section 126 of the Danish Administration of Justice Act, Danish lawyers must adhere to ‘good lawyer conduct’. This means that a lawyer acting on behalf of a trademark proprietor must disclose information essential to the infringer’s assessment of risk, including as part of a cease and desist letter.68
Before civil litigation is commenced, a trademark proprietor may also apply for the securing of evidence pursuant to Section 653 of the Administration of Justice Act. As opposed to actions for preliminary measures, securing of evidence actions must be submitted to the bailiff’s courts.
In Denmark, there are generally three alternatives to civil litigation in trademark disputes, namely arbitration, mediation and court mediation. All share one common characteristic, namely that they only come into play if the parties to a trademark dispute agree to pursue a path that is different from civil litigation.
iii Conduct of proceedings
Discovery and disclosure as part of proceedings
Pursuant to Chapter 29a of the Danish Administration of Justice Act, a party to an intellectual property infringement trial may ask the court to order the opposing party as well as a third party to disclose certain infringement information under certain circumstances, provided that it has already been fully established that an infringement has occurred. In addition, pursuant to Sections 298 and 299, a party to an intellectual property infringement trial may ask the court to order the opposing party as well as a third party to produce evidence, on which the asking party intends to rely. If the opposing counsel fails to comply with such orders, the court may assume that the factual circumstances are as the party asking for disclosure has presented them to the court. If a third party fails to comply, the third party may face various sanctions, including fines. Chapter 29a of the Danish Administration of Justice Act does not apply to actions for preliminary measures.69
Submission of legal and factual evidence
In the context of actions for preliminary measures, there are very few restrictions on submissions of legal and factual evidence. In most cases, the courts will allow examinations of party representatives and witnesses, submissions of various documents, submissions of products and other physical forms of evidence, expert opinions (including one-sided expert opinions). However, the court may restrict evidence, which will prolong the injunction case unreasonably.70
In the context of trials at first instance, various evidence restrictions apply. First of all, evidence must be submitted within certain time frames that are normally fixed by the courts. Generally, evidence will be allowed, even if it has been obtained illegally.71
On the other hand, access to submit expert opinions is restricted in the context of trials. Expert opinions obtained by one party before the trial may, in most cases, be produced as evidence, whereas expert opinions obtained by one party, after the trial is initiated, may not be submitted.
Written and oral proceedings
In Denmark, the starting point is that cases are pleaded orally.72 Even so, cases may be pleaded in writing, if the parties agree to it, and if special circumstances support that the trial be pleaded in writing.73 Where the focal point of a trial is one of law and not one of evidence, such a trial may be suitable for pleading in writing.
The starting point is that only lawyers may represent parties at trial.74 There are exceptions to this starting point, but they are never relevant in the context of trademark disputes. That said, any party may represent itself, himself or herself,75 although the courts may force such parties to retain legal representation.76
In terms of cost recovery, the starting point is that the losing party must cover the costs inflicted by the trial on the winning party, unless the parties have agreed otherwise.77 This wording might suggest that, in Denmark, trial costs are fully recovered. This is not the case. Out-of-pocket expenses, such as those associated with obtaining an expert opinion before the court, are normally fully covered. However, legal fees are only covered up to an ‘appropriate amount’, which, in principle, is awarded arbitrarily by the courts.78 The presidents of the Western and Eastern High Courts have issued a brief on costs in civil trials, which, among other things, contains a table of costs corresponding to the value of the case, which is mostly adhered to.79
The Danish Administration of Justice Act does not set out any maximum time frames for civil proceedings.
The Trademarks Act is quite clear about which remedies may be applied for in a regular trial concerning trademark infringements. If a trademark infringement is established, the trademark proprietor may, in accordance with Article 13 of the Enforcement Directive,80 claim reasonable remuneration and damages.81 The term ‘reasonable remuneration’ means a licence fee. Reasonable remuneration may be awarded, even if no loss has been substantiated. On the other hand, damages are only awarded if some sort of (additional) loss may be established.
In addition to reasonable remuneration and damages, a trademark proprietor may, inter alia, claim that goods infringing a trademark right be: (1) temporarily withdrawn from the trade; (2) finally withdrawn from the trade; (3) destroyed; or (4) handed over to the trademark proprietor; and that the infringing trademarks be removed.82
If, in the context of an action for preliminary measures, a trademark infringement is rendered likely (as opposed to demonstrated), the applicant may ask the court to order that the subject of the action for preliminary measures is ordered to perform, abstain from or withstand certain actions.83 Moreover, the applicant may ask the court to seize goods that are likely to be used to violate an injunction or an order.84
V OTHER ENFORCEMENT PROCEEDINGS
Pursuant to Section 42(2) of the Trademarks Act, intentional trademark infringements in aggravating circumstances may result in imprisonment of up to one year and six months, unless a higher penalty is warranted under Section 299b of the Danish Criminal Code.85 Section 299b of the Criminal Code states that trademark infringements of a particularly serious nature may result in imprisonment for up to six years, if the purpose of the trademark infringement was to obtain unjustified profits or if, regardless of the profits obtained, the circumstances are particularly aggravating. This means that if a trademark proprietor is faced with particularly grave trademark infringements, which fall under the scope of either Section 42(2) of the Trademarks Act or Section 299b of the Criminal Code, the trademark proprietor may report such infringements to the State Prosecutor for Serious Economic and International Crime (SØIK).86 If following an investigation, SØIK decides to proceed with the charges, the trademark proprietor may, in principle, file a claim for damages as part of the criminal proceedings.87 However, trademark proprietors often find that the courts decide to carve out claims for damages, leaving it to the trademark proprietors to initiate civil proceedings.88
VI RECENT AND PENDING CASES
Karnov Group Denmark A/S v. J H Schultz Information A/S
In May 2018, the Maritime and Commercial High Court ruled at first (and last) instance in a trial on the merits submitted by Karnov Group Denmark A/S (Karnov) against J H Schultz Information A/S (Schultz).89 This judgment, as well as the decisions by the Maritime and Commercial High Court and the Eastern High Court preceding the judgment and forming part of the same complex of cases, drew a great deal of attention in Denmark.
The focal point of this complex of cases was the question of whether Karnov, provider of the leading case-law database in Denmark and the proprietor of, inter alia, the trademark UfR (word), could prohibit Schultz from using UfR (word) as a metatag and identifier as part of Schultz’s competing subscription-based online case-law database.
For the purpose of identifying decisions and judgments in its database, Karnov uses a particular format known as the UfR-number, which contains the trademark UfR (word). Karnov had learned that Schultz also used this UfR-number in its database. Inter alia, Schultz allowed its users to search for judgments using the UfR-number.
This led Karnov to submit a request for a preliminary injunction against Schultz to the Maritime and Commercial Court, claiming that this use of the UfR-number constituted a trademark infringement of its unregistered rights to, inter alia, UfR (word) pursuant to Sections 4(1)(1) and 4(1)(2) of the Former Danish Trademark Act. Schultz’s principal argument was that use of the UfR-number in its database did not constitute trademark use, and that in any case use of UfR (word) was allowed pursuant to Sections 5(2) and 5(3) of the Trademarks Act, which implemented Articles 6(1)(b) and 6(1)(c) of the Former Trademarks Directive.90
The Maritime and Commercial Court granted the injunction.91 However, on appeal, the Danish Eastern High Court ruled92 that Schultz had not used Karnov’s trademark in the course of trade, stating explicitly that the function of the trademark had not been affected.
Following the decision by the Eastern High Court, Karnov submitted a trial on the merits to the Maritime and Commercial High Court. Both Karnov and Schultz principally relied on the arguments previously relied on by the parties as part of the action for preliminary measures.
The Maritime and Commercial High Court delivered its judgment on 3 May 2018, and this time the Maritime and Commercial High Court, consisting of five judges, acquitted Schultz. Referring to the judgment of the Court of 14 May 2002 in Case No. C-2/00 (Michael Hölterhoff v. Ulrich Freiesleben), the court initially remarked that a reference to a trademark for descriptive purposes does not entail an adverse effect on the functions of that trademark. Moreover, following a case-specific analysis of the use of UfR (word) undertaken by Schultz, the Maritime and Commercial High Court concluded that this use did not amount to commercial communication, but rather constituted descriptive information, namely as a means of identifying a ruling, meaning that the functions of Karnov’s trademark UfR (word) had not been affected adversely.
The judgment of the Maritime and Commercial High Court was not appealed. The Maritime and Commercial High Court thus ended up with the final say in this complex of cases.
Not many Danish rulings have relied explicitly on the functions of the trademark, making the decision of the Eastern High Court and the judgment of the Maritime and Commercial High Court particularly interesting.
G-Star Raw CV v. Kings & Queens ApS
On 27 June 2018, the Eastern High Court ruled, at second instance, in a trademark dispute between international fashion brand G-Star Raw CV (G-Star Raw) and Danish retailer Kings & Queens ApS (Kings & Queens). The case was one of only a handful of Danish trademark cases to be centred around the use a translation of a trademark for identical goods and is thus of interest.
In 2016, G-Star Raw, proprietor of numerous registrations throughout the world of the trademark RAW for goods in class 25, became aware that Kings & Queens had applied for registration of the trademark ‘Raw Apparel Est. 04’ (figurative), and that Kings & Queens had started using the marks ‘RAW APPEAL’ (word) and ‘RAW APPAREL’ (word) for ‘clothing’ in class 25. A settlement was concluded, which, inter alia, required Kings & Queens to cease all use of the concerned marks.
Even so, in July 2017, shortly after the agreed phaseout period expired, G-Star Raw became aware that Kings & Queens had started using several marks consisting of or containing the Danish word ‘RÅ’, which primarily translates into RAW, for ‘clothing’ and ‘footwear’ in class 25, namely ‘RÅ’, ‘ЯÅ’, ‘ЯÅ ESTABLISHED 04’ and ‘ЯÅ Est. RÅ 04’. This time Kings & Queens refused to settle. Thus, in August 2017, G-Star Raw applied to the Maritime and Commercial High Court in Copenhagen for preliminary measures.
A decision was rendered by the Maritime and Commercial High Court on 9 February 2018.93 Rather unusually, the two non-legal expert judges disagreed with the presiding legal judge and voted to decide in favour of Kings & Queens, observing that in their opinion the marks were visually and orally dissimilar, just as these judges downplayed the conceptual identity relied on by G-Star Raw. These judges observed that there was no risk that the relevant consumer would perceive ‘RÅ’ to be a national sub-brand belonging to G-Star Raw, even though they did accept that ‘RÅ’ could mean ‘raw’. The presiding legal judge, on the other hand, voted in favour of an injunction, observing, among other things, that (1) G-Star had used ‘RAW’ independently; (2) the marks in question were orally and visually similar, just as they were conceptually identical; (3) use of the mirror letter ‘R’ as well as the word elements ‘ESTABLISHED 04’ and ‘Est. 04’ made no difference; (4) the goods marketed by Kings & Queens and G-Star did not differ to an extent that mattered; and (5) a likelihood of confusion was thus rendered probable.
On 27 June 2018, the Eastern High Court overturned the decision of the majority of the Maritime and Commercial High Court.94 Referring explicitly to the observations of the minority of the Maritime and Commercial High Court, the Eastern High Court agreed that it had been well established that ‘RAW’ had been used independently by G-Star Raw, and that, at the very least, a likelihood of confusion had been rendered likely, just as the settlement agreement had been breached.
The decision seems to be in line with Danish case law, as well as EU case law, in relation to translations of marks and seems to confirm that where some visual and aural similarity exists, conceptual identity may cause a likelihood of confusion, if such conceptual identity is easily understood by the relevant consumers.
An amendment to the Trademarks Act came into force on 1 January 2019 (the Amendment).95 The purpose of the Amendment was, inter alia, to implement the Trademarks Directive.96 While no major upheaval was intended, the Amendment nevertheless introduced a few significant changes, a few of which are described in the following.
Following the entry into force of the Amendment, trademark rights may still be acquired through use in the course of trade.97 However, the Trademarks Act now explicitly states that such use in the course of trade must be of more than mere local significance.98 According to the explanatory notes, this is to ensure alignment with Danish case law, which, on numerous occasions, has explained that mere local use of a mark is not sufficient to establish trademark rights through use. Even though the explanatory notes indicate that no material change is intended, this amendment might still end up raising the ‘use threshold’. Should this scenario materialise, it would be reasonable to expect that Section 22 of the new Danish Marketing Practices Act, which offers supplementary protection, will become relevant once again, following a period of hibernation.
Another change relates to the notion of publication. Under the Former Trademarks Act, the DKPTO did not publish the application, but would rather publish the registration in the Danish Trademarks Gazette when a registration certificate was issued.99 Pursuant to the Trademarks Act, the practice of the DKPTO is now aligned with that of the European Union Intellectual Property Office, meaning that applications, not registrations, are published.100 From a practical perspective, this is good news. This change in procedure is likely to make it easier for international applicants to grasp the Danish application process.
Even more importantly, trademark applicants now have three different options when it comes to search reports. First, the applicant may choose not to receive a search report at all.101 This option is already known from the EU Trademark system, which allows for ‘fast-track’ applications, provided that certain conditions are satisfied. Second, the applicant may choose to receive a ‘regular’ search report, which highlights potentially conflicting prior trademark rights to the extent that they are registered or have been applied for.102 In this regard, the Amendment introduced a limitation. Before, the regular search reports included further relative grounds for refusal.103 According to the explanatory notes,104 the underlying reason for this limitation is that the identification of unregistered rights, such as copyrights and portraits, by the DKPTO in its former regular search reports entailed a great deal of uncertainty, making it difficult for applicants to rely on such search reports, just as applicants may have been misled into making unfortunate decisions, such as abandoning an application that should clearly not have been abandoned. Third, applicants may now choose to receive a reasoned search report, if they pay a fee. This initiative was criticised by stakeholders. It was said that just like the former regular search reports, reasoned search reports would provide a false sense of security, considering that many rights will not be considered. Moreover, there is a risk that such reasoned search reports may be misappropriated in legal proceedings, serving as evidence for or against infringements, which could (unintentionally) turn the DKPTO into a source of binding legal opinions.
Regardless of how the Amendment is perceived, it will be interesting to see what its long-term effects will be. Perhaps the concerns of some will turn out to be unfounded, which may very well turn out to be the case.
1 Jakob Krag Nielsen is an attorney and partner and Søren Danelund Reipurth is an attorney and director at Lundgrens.
2 Consolidated Act (Denmark) No. 88 of 29 January 2019 (the Trademarks Act).
3 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks (Recast) (the Trademarks Directive).
4 Order on Application and Registration, etc. of Trademarks (Denmark) No. 1685 of 18 December 2018 (the Registration Order).
5 Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
6 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as amended on 3 October 2006 and on 12 November 2007 (the Madrid Protocol).
7 The Paris Convention for the Protection of Industrial Property of 20 March 1883, as amended on 28 September 1979 (the Paris Convention).
10 Act (Denmark) No. 164 of 26 February 2014 on Internet Domains (the Domain Names Act), Section 28(1).
12 Domain Names Act, Section 28(4)(1).
14 DK Hostmaster’s Terms and conditions for the right of use to a .dk domain name, version 09 of 19 December 2017, Paragraph 9; www.dk-hostmaster.dk/en/how-submit-complaint-about-right-domain-name.
15 DK Hostmaster’s Terms and conditions for the right of use to a .dk domain name, version 09 of 19 December 2017, Paragraph 9.1.
16 ibid., Paragraph 9.2.
17 ibid., Paragraph 9.3.
18 ibid., Paragraph 9.
21 Consolidated Act (Denmark) No. 1089 of 14 September 2015 on Limited Companies and Limited Liability Companies (the Companies Act).
23 Consolidated Act (Denmark) No. 103 of 24 January 2012 (the Collective Marks Act) (no longer in force).
24 Trademarks Act, Section 1a(3)-(4).
25 Consolidated Act (Denmark) No. 223 of 26 February 2017 (the Former Trademarks Act).
26 Knud Wallberg and Mikael Francke Ravn, Varemærkeret (Djøf Forlag, 5th edition 2017), p. 344.
27 Act (Denmark) No. 426 of 3 May 2017 on Marketing Practices (the Marketing Practices Act).
28 Proposal for the Marketing Practices Act as put forward on 12 October 2016 by the Minister for Economic and Business Affairs (Troels Lund Poulsen), comments to Section 22.
30 Domain Names Act, Section 25(1).
31 ibid., Section 25(2).
32 Proposal for the Domain Names Act as put forward on 13 November 2013 by the Minister of Trade, Industry and Growth (Henrik Sass Larsen), comments to Section 25.
33 Registration Order, Section 7(1); http://iprights.dkpto.org/trademark/how-to-file.aspx.
34 ibid., Section 7(3).
35 Registration Oder, Section 10(1).
36 Trademarks Act, Section 60a(1).
38 Trademarks Act, Section 16(1); http://iprights.dkpto.org/trademark/our-examination-of-your-application.aspx.
39 Registration Order, Section 11(2).
40 ibid., Section 11(3).
41 ibid., Section 13.
42 ibid., Section 12; Trademarks Act, Section 17.
43 Trademarks Act, Section 11(3).
44 ibid., Section 11(2).
45 Former Trademarks Act, Section 23.
46 Trademarks Act, Section 19(2).
47 ibid., Section 19(3).
48 ibid., Section 19(1).
52 Trademarks Act, Section 34(1).
53 ibid., Section 34(2).
54 Trademarks Act, Section 60C(2); http://iprights.dkpto.org/trademark/prices-and-payment.aspx.
55 Trademarks Act, Section 46(1).
56 ibid., Section 46(3).
57 Consolidated Act (Denmark), No. 1257 of 13 October 2016 (the Administration of Justice Act), Section 225(3).
58 ibid., Section 225(1).
59 ibid., Section 368(1).
60 ibid., Section 368(4).
62 ibid., Chapter 40.
63 ibid., Section 225(3).
64 ibid., Section 427.
65 Trademarks Act, Section 43c(2).
66 Administration of Justice Act, Section 425.
67 Jens Jakob Bugge et al.: Dansk Immaterialret II, bind II, Sanktioner og Håndhævelse (Gads Forlag, 1st edition 2015), p. 157.
68 Judgment of the Maritime and Commercial High Court of 6 September 2017 in Cases Nos. V-64-14 and V-27-15.
69 Clement Salung Petersen: Immaterialrettigheder og foreløbige forbud (DJØF Forlag, 1st edition. 2008), p. 118.
70 Administration of Justice Act, Section 417(1).
71 U 2012 1893 V.
72 Administration of Justice Act, Section 365(2).
73 ibid., Section 366(1).
74 ibid., Section 131.
75 ibid., Section 259(1).
76 ibid., Section 259(2).
77 ibid., Section 312(1).
78 ibid., Section 316(1).
80 Directive 2004/48/EC on the enforcement of intellectual property rights, of the European Parliament and of the Council, of 29 April 2004 (the Enforcement Directive).
81 Trademarks Act, Section 43(1).
82 ibid., Section 44(1).
83 Administration of Justice Act, Section 411(1).
84 ibid., Section 423(1).
85 Consolidated Act (Denmark) No. 1156 of 20 September 2018 (the Criminal Code).
87 Administration of Justice Act, Section 991.
88 ibid., Section 991(4).
89 Judgment of the Maritime and Commercial High Court of 3 May 2018 in Case No. V-17-17.
90 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks (the Former Trademarks Directive).
91 Decision of the Maritime and Commercial High Court of 18 December 2015 in Case No. A-24-15.
92 Decision of the Eastern High Court of 7 July 2016 in Case No. B-267-16.
93 Decision of the Maritime and Commercial High Court of 9 February 2018 in Case No. A-35-17.
94 Decision of the Eastern High Court of 27 June 2018 in Case No. B-341-18.
95 Act No. 1533 of 18 December 2018 on the amendment of the Trademarks Act and various other acts and on the repeal of the Collective Marks Act (Processing of applications, grounds for refusal, representation of marks, goods in transit, transfer of proceeds from fees, etc.).
96 Directive (EU) 2015/2436, to approximate the laws of the EU Member States relating to trademarks, of the European Parliament and of the Council of 16 December 2015 (codified version).
97 Trademarks Act, Section 3(1)(3).
99 Former Trademarks Act, Section 23.
100 Registration Order, Section 13(1).
101 Trademarks Act, Section 11(3).
102 ibid., Section 17.
103 Order on Application and Registration, etc. of Trademarks and Collective Marks No. 364 of 21 May 2008 (the Former Registration Order), Section 9(1).
104 Proposal for amendment of the Trademarks Act and various other acts and on the repeal of the Collective Marks Act (Processing of applications, grounds for refusal, representation of marks, goods in transit, transfer of proceeds from fees, etc.) as put forward on 3 October 2018 by the Minister of Trade and Industry (Rasmus Jarlov), explanatory notes, pp. 40–41.