The Trademarks Law Review: Denmark
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.
Year in review
i Mikkel Rundin Ørsted et al against Ørsted A/S et al
On 30 November 2020, the Danish Supreme Court2 ruled, at second instance, in a dispute between the descendants of famous scientist H C Ørsted and his brother Jacob Albert Ørsted (the Descendants) and the Danish energy company Ørsted A/S and its group companies (Ørsted Company). This judgment, as well as the judgment rendered at first instance by the Maritime and Commercial High Court,3 attracted a great deal of attention in Denmark.
The case concerned whether Ørsted Company's registration and use of ØRSTED/ORSTED as a trademark, company name, secondary name and domain name infringed the Descendants' right to the surname Ørsted, and whether this use could be enjoined, and under what legal framework.
In Denmark, a surname carried by fewer than 2,000 individuals is considered a protected surname under the Danish Names Act. The surname Ørsted falls into this category. The Descendants thus argued that the use of the surname Ørsted in relation to, inter alia, the Trademarks Act, the Companies Act and the Domain Names Act should be interpreted in light of Section 27 of the Names Act, which states that 'a person who can prove that another person unjustifiably uses the person's name or a name that bears such a resemblance to it that confusion can easily occur may, by judgment, order the other person to cease using the name' (our translation).
The Supreme Court found and clarified that the protection under Section 27 of the Names Act does not apply to trademark or company names, referencing the preparatory works of the legislation that, inter alia, expressly stated that the protection offered was not intended to extend to protection against use as a trademark. Relative to the Trademarks Act, the Supreme Court confirmed that trademarks are excluded from registration if they consist of or contain a component that can be perceived as a personal name or company name, to which someone has legal title, without authorisation. However, the protection is not intended to extend to the rights of long since deceased persons, such as the scientist H C Ørsted.
With this judgment, the Supreme Court has clarified the interplay between and the interpretation of the Names Act and lex specialis (the Trademarks Act, Companies Act and Domain Names Act) in cases of use by a company of personal names as its mark. The Supreme Court also upheld the general guideline that 'rare' surnames (carried by fewer than approximately 30 individuals) may not be used or registered as trademarks.
ii SG Armaturen A/S and AS against ALL-Light A/S and Unilamp Norden AS
On 29 April 2021, the Danish Maritime and Commercial High Court4 decided on a preliminary injunction dispute between the Norwegian lighting company SG Armaturen AS and its Danish subsidiary, SG Armaturen A/S (both SG), and ALL-Light A/S (ALL-Light), the Danish distributor of Unilamp Norden AS (party intervention) (Unilamp).
SG sought to prohibit ALL-Light's use of 'GYRO' in connection with the sale and marketing of specific downlight products. The request was based on SG's Danish trademark registration of GYRO in class 11 (lighting products). Unilamp, however, had registered the trademark GYRO in Norway, Sweden and Iceland in the same class. Due to these rights and in consideration of its market position in Denmark, Unilamp intervened the case. Furthermore, and parallel with the Danish case, proceedings in Sweden and Norway between the parties pertaining to the validity of Unilamp's trademark registrations for GYRO in the respective countries had been under way. Unilamp prevailed in both cases.
The Danish Maritime and Commercial High Court found that SG had not provided a sufficient explanation as to the loss they would have to endure should they await the outcome of ordinary civil proceedings. This was, in particular, because SG had explained that they had not marketed their products under the trademark GYRO in either Denmark or Norway at the time of the proceedings as they were awaiting the outcome of the Norwegian case. Furthermore, the court noted that Unilamp had brought a cancellation action against SG subsequently to the filing of the preliminary request, and that the hearing was scheduled to take place during August 2021 (the hearing has since been postponed).
In addition, the court found that SG had been aware of ALL-Light's use of GYRO at least six months prior to filing their request for a preliminary injunction. Thus, and as SG had prior knowledge of Unilamp's use of GYRO due to the proceedings in Norway and Sweden, the court found that more time had elapsed between SG's knowledge of Unilamp's presence on the Danish market (via ALL-Light) and the filing of the preliminary injunction request than was reasonably necessary.
On that basis, the court did not impose a preliminary injunction on ALL-Light. Thus, the case highlights that rights holders may not be able to rely solely on their trademark registrations as circumstances pertaining to the use of such trademark may be a significant factor as to the necessity of the injunction, just as time is a relevant factor as well.
The principal Danish legislation related to trademarks consists of the Trademarks Act,5 which came into force on 1 January 2019, and which, inter alia, serves to incorporate the Trademarks Directive6 into Danish law. In addition, the Registration Order7 sets out supplementary provisions pertaining primarily to the application for and registration of trademarks in Denmark. Denmark has acceded to the TRIPS Agreement.8 In addition, Denmark has acceded to the WIPO Convention and is a contracting party to numerous WIPO-administered treaties, including, by way of example, the Madrid Protocol9 and the Paris Convention.10
The DKPTO forms part of the Danish Ministry of Industry, Business and Financial Affairs.11 It works to help companies protect and exploit their ideas and inventions and, according to its most recent vision statement, aims to be Europe's best intellectual property environment for the trades and industries.12 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.13 The Complaints Board claims to be an easy, faster and cheaper alternative to the courts in domain name disputes,14 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.15
DK Hostmaster maintains the Danish internet infrastructure and administers the database of all .dk domain names on behalf of the Danish government.16
Although DK Hostmaster does not hear domain name complaints, such complaints may nevertheless, in certain special situations, be submitted to DK Hostmaster.17 These special situations include, inter alia, matters concerning typosquatting.18 Moreover, DK Hostmaster is competent where there is an obvious risk of economic crime, compromising IT equipment or content of a highly offensive nature.19 In addition, 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.20 In such cases, DK Hostmaster may generally suspend and, subsequently, block or delete a domain name.21
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.22 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.23 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,24 the Authority will remove the name from the register.25
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,28 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 with 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 from 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.29 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 that 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,30 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 these 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 the 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 comes 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.31 Section 22 is a national Danish rule that does not implement or reflect EU legislation.32
The Danish Trademarks Act protects geographical indications in various ways. Sections 10 and 13 stand out. Pursuant to Section 10(1)(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.33 Moreover, registrants must not register and maintain registrations of internet domain names solely for the purpose of selling or renting these domain names to other parties.34 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.35
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.36 In the latter case, the application should be accompanied by a Danish translation of the list of goods and services.37 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.38 The application fee for an application that covers one class is currently 2,000 Danish kroner.39 For every additional class, an additional fee of 600 Danish kroner is payable, albeit the fee for the first additional class is only 200 Danish kroner.40 Additional fees, as of 1 January 2019, may be found on the DKPTO website.41
The DKPTO examines whether the formal requirements are satisfied. In addition, and perhaps even more interestingly, the DKPTO examines whether there are any absolute grounds for refusing the application.42
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.43 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.44
If no absolute grounds are identified, and all formal requirements are satisfied, the DKPTO proceeds to publish the application (not the registration).45
ii Prior rights
The DKPTO first examines for various prior rights in the form of a search report.46 However, applicants may request that no search report is generated,47 therefore allowing for fast-track applications. As a third option, applicants may now request that a reasoned search report be generated.48
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.
Search reports generated by the DKTO are only informative, meaning that unlike other national or regional trademark offices, the DKPTO will proceed to publish the application, even if conflicting prior rights are identified, unless the applicant decides otherwise.
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.49 This is no longer the case. Now, a trademark application may only be opposed on the basis of relative grounds for refusal.50
Oppositions claiming relative grounds for refusal may only be submitted by the proprietor of the prior rights on which the opposition is based.51 An opposition must be filed within two months of the date of publication.52 This is an absolute deadline.53
Anonymous oppositions are not allowed. Moreover, an opposition must be reasoned, although not much is required of the reasoning.54 The opposition fee (2,500 Danish kroner) may be paid in a number of ways.55
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.56 However, as is the case with regard to oppositions, it is not possible to base an application on third-party rights.57 Moreover, the application must be reasoned when filed, and the applicant must pay a fee of 2,500 Danish kroner, which may be paid in a number of ways.58 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.59 Moreover, decisions rendered by the DKPTO and the Board of Appeals for Patents and Trademarks may be submitted to the courts. However, decisions rendered by the DKPTO, which may be appealed to the Board of Appeals for Patents and Trademarks, may not be submitted to the courts, before the Board of Appeals for Patents and Trademarks has rendered its decision relative to the appeal.60
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.61
Disputes concerning EU trademarks must, at first instance, be submitted to the Maritime and Commercial High Court, which has exclusive jurisdiction in such matters.62
Judgments in trademark disputes rendered by the city courts may be appealed to the high courts.63 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.64 In addition, these 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.65
In addition to ordinary trials, trademark disputes may also be submitted to the courts in the form of preliminary injunction actions.66 An action for preliminary measures in a trademark dispute may be 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.67 Section 43b(3) 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.68 If some sort of preliminary measure is awarded, a trial on the merits must be submitted within 14 days.69
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.70 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 and 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.71
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.72
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 and expert opinions (including one-sided expert opinions). However, the court may restrict evidence, which will prolong the injunction case unreasonably.73
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.74
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.75 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.76 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.77 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,78 although the courts may force such parties to retain legal representation.79
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.80 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.81 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.82
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,83 claim reasonable remuneration and damages.84 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 April 2021, the Danish Maritime and Commercial High Court awarded a rare amount in remuneration and damages of 1 million Danish kroner.85
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 (5) that the infringing trademarks be removed.86
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.87 Moreover, the applicant may ask the court to seize goods that are likely to be used to violate an injunction or an order.88
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.89 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).90 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.91 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.92
An amendment to the Trademarks Act came into force on 1 January 2019 (the Amendment).93 The purpose of the Amendment was, inter alia, to implement the Trademarks Directive.94 While no major upheaval was intended, the Amendment nevertheless introduced a few significant changes, a few of which are described below.
The Trademarks Act now explicitly states that use in the course of trade must be of more than mere local significance in order to establish use-based trademark rights.95 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. Although two and a half years have now passed since the Amendment entered into force, it is still too early to conclude which way the wind is blowing.
Another change relates to the notion of publication. The practice of the DKPTO is now aligned with that of the European Union Intellectual Property Office, meaning that applications, not registrations, are published.96 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, which most trademark advisers have surely already experienced.
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.97 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.98 In this regard, the Amendment introduced a limitation. Before, the regular search reports included further relative grounds for refusal.99 Third, applicants may now choose to receive a reasoned search report, if they pay a fee.100 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 these 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. At least as of now, our perception is that not many applicants opt for the reasoned search reports.
1 Søren Danelund Reipurth and Nina Ringen are partners at Lundgrens.
2 Judgment of the Danish Supreme Court of 30 November 2021 in Case No. BS-25678/2019-HJR.
3 Judgment of the Danish Maritime and Commercial High Court of 10 May 2019 in Case No. BS-3803/2018-SHR et al.
4 Judgment of the Danish Maritime and Commercial High Court of 29 April 2021 in Case No. BS-38794/2020-SHR.
5 Consolidated Act (Denmark) No. 88 of 29 January 2019 (the Trademarks Act).
6 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).
7 Order on Application and Registration, etc. of Trademarks (Denmark) No. 1685 of 18 December 2018 (the Registration Order).
8 Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
9 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).
10 The Paris Convention for the Protection of Industrial Property of 20 March 1883, as amended on 28 September 1979 (the Paris Convention).
13 Act (Denmark) No. 164 of 26 February 2014 on Internet Domains (the Domain Names Act), Section 28(1).
15 Domain Names Act, Section 28(4)(1).
17 DK Hostmaster's Terms and conditions for the right of use to a .dk domain name, version 11 of 6 September 2021, Paragraph 9; http://www.dk-hostmaster.dk/en/how-submit-complaint-about-right-domain-name.
18 DK Hostmaster's Terms and conditions for the right of use to a .dk domain name, version 11 of 6 September 2021, Paragraph 9.1.
19 ibid., Paragraph 9.2.
20 ibid., Paragraph 9.3.
21 ibid., Paragraph 9.
24 Consolidated Act (Denmark) No. 736 of 23 July 2019 on Limited Companies and Limited Liability Companies (the Companies Act).
26 Consolidated Act (Denmark) No. 103 of 24 January 2012 (the Collective Marks Act) (no longer in force).
27 Trademarks Act, Section 1a(3)-(4).
28 Consolidated Act (Denmark) No. 223 of 26 February 2017 (the Former Trademarks Act).
29 Knud Wallberg and Mikael Francke Ravn, Varemærkeret (Djøf Forlag, 5th edition 2017), p. 345.
30 Consolidated Act (Denmark) No. 426 of 3 May 2017 on Marketing Practices (the Marketing Practices Act).
31 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.
33 Domain Names Act, Section 25(1).
34 ibid., Section 25(2).
35 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.
36 Registration Order, Section 7(1); http://iprights.dkpto.org/trademark/how-to-file.aspx.
37 ibid., Section 7(3).
38 Registration Oder, Section 10(1).
39 Trademarks Act, Section 60a(1).
40 Trademarks Act, Section 60a(1).
42 Trademarks Act, Section 16(1); http://iprights.dkpto.org/trademark/our-examination-of-your-application.aspx.
43 Registration Order, Section 11(2).
44 ibid., Section 11(3).
45 ibid., Section 13.
46 ibid., Section 12; Trademarks Act, Section 17.
47 Trademarks Act, Section 11(3).
48 ibid., Section 11(2).
49 Former Trademarks Act, Section 23.
50 Trademarks Act, Section 19(2).
51 ibid., Section 19(3).
52 ibid., Section 19(1).
56 Trademarks Act, Section 34(1).
57 ibid., Section 34(2).
58 Trademarks Act, Section 60C(2); http://iprights.dkpto.org/trademark/prices-and-payment.aspx.
59 Trademarks Act, Section 46(1).
60 ibid., Section 46(3).
61 Consolidated Act (Denmark), No. 1445 of 29 September 2020 (the Administration of Justice Act), Section 225(3).
62 ibid., Section 225(1).
63 ibid., Section 368(1).
64 ibid., Section 368(4).
66 ibid., Chapter 40.
67 ibid., Section 225(3).
68 ibid., Section 427.
69 Administration of Justice Act, Section 425.
70 Jens Jakob Bugge et al: Dansk Immaterialret II, bind II, Sanktioner og Håndhævelse (Gads Forlag, 1st edition 2015), p. 157.
71 Judgment of the Maritime and Commercial High Court of 6 September 2017 in Cases Nos. V-64-14 and V-27-15.
72 Clement Salung Petersen: Immaterialrettigheder og foreløbige forbud (DJØF Forlag, 1st edition. 2008), p. 118.
73 Administration of Justice Act, Section 417(1).
74 U 2012 1893 V.
75 Administration of Justice Act, Section 365(2).
76 ibid., Section 366(1).
77 ibid., Section 131.
78 ibid., Section 259(1).
79 ibid., Section 259(2).
80 ibid., Section 312(1).
81 ibid., Section 316(1).
83 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).
84 Trademarks Act, Section 43(1).
85 Judgment of the Maritime and Commercial High Court of 29 April 2021 in Case No. BS-4213-2018-SHR.
86 ibid., Section 44(1).
87 Administration of Justice Act, Section 411(1).
88 ibid., Section 423(1).
89 Consolidated Act (Denmark) No. 1650 of 17 November 2020 (the Criminal Code).
91 Administration of Justice Act, Section 991.
92 ibid., Section 991(4).
93 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.).
94 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).
96 Registration Order, Section 13(1).
97 Trademarks Act, Section 11(3).
98 ibid., Section 17.
99 Order on Application and Registration, etc. of Trademarks and Collective Marks No. 364 of 21 May 2008 (the Former Registration Order), Section 9(1).
100 Trademarks Act, Section 11(2).