The new Danish Trademarks Act: Five changes to note

1. More expensive to apply for trademark registration in three classes

The new Act changes the structure of the application fee.  The application fee when applying for registration in one Nice Classification class is now DKK 2,000. For each class in addition to the first class, a supplementary fee will be payable. The supplementary fee is DKK 200 for the first additional class and DKK 600 for any further additional classes. With this change, the fee structure in Denmark has been aligned to the structure applying when filing EU trademark applications with the European Union Intellectual Property Office (EUIPO).

Until 1 January 2019, the application fee consisted of a base fee of DKK 2,350 covering three classes in the Nice Classification system. An applicant applying for registration in three classes after 1 January 2019 therefore has to pay a fee of DKK 2,800 to the Danish Patent and Trademark Office.

Before filing an application for registration, we recommend that you consider carefully which products and/or services are to be marketed by use of the trademark. In this way, you will not have to pay registration costs for products and/or services that your trademark will not apply to.

By way of example, a business contemplating to use its trademark for marketing and sale of garments may also apply for registration under the heading “advertising, marketing and promotional services"” in class 35 of the Nice Classification if the business produces its own advertising material for the garments. In this case, registration in class 35 will be a superfluous additional cost to the business. The reason is that “advertising, marketing and promotional services” covers services rendered for third parties, for instance production of advertisements and/or provision of advertising advice to other businesses.  

2. Stronger trademark protection

In order to strengthen the protection of trademarks and combat counterfeiting more effectively, a new rule has been introduced making it possible for holders of trademarks to prevent third parties from importing infringing products into the Danish tariff area. For this purpose, it makes no difference if the products are to be marketed in Denmark or not. It is sufficient that the infringing products are e.g. to be stored temporarily in Denmark. 

For a trademark owner to prevent importation of an infringing product, two requirements must be satisfied:

1. the owner’s trademark must be registered
2. the products must have entered the Danish tariff area for business purposes as the Danish Trademarks Act does not cover private acts.  

Requirement for owner’s trademark registration

Owners of trademark rights that have been gained by use cannot rely on the rules. The reason is - probably - that such use-based right in Denmark, as opposed to a registered right, is not clearly defined in a certificate of registration or in any other official trademark register. Thus, it is easier for the owner of a registered trademark to prove the trademark right than for the owner of a trademark right that has been gained by use. 

If the legislator had made it possible to prevent goods in transit with reference to a use-based right, the competent authority would have, first of all, to assess the validity of the right. 

This would not only be a time-consuming affair, but also inflict a loss on the business whose products are withheld if it turns out that the alleged use-based right does not exist after all.

So, if you are the owner of an unregistered trademark gained by use in Denmark, there is good reason to apply for registration under the new regime. A certificate of registration defining your right will put you in a much stronger position in case of infringement.

3 . Graphical representation of trademark no longer required

The former requirement for graphical representation of a trademark made it difficult to obtain - and in some cases even obstructed - trademark protection of unconventional trademarks such as audio and video rights.  Until 1 January 2019, the Danish Patent and Trademark Office had specific guidelines specifying how audio brands and movable brands were to be described in order to be registered. Under the former rules, an audio brand would for instance meet the requirement for graphic reproduction if it was described by way of notation, being divided into times and specifying the clef, notes and rests.

With the new rules, there is no longer any requirement for graphical representation. Instead, the trademark must merely be capable of being reproduced in the trademark register in a manner that makes it possible to clearly establish the content of the trademark right. It means that an application for trademark protection of audio and video clips can now be filed by submitting audio and video files. 

4. New fast-track scheme

When considering an application for trademark registration , the Danish Patent and Trademark Office used to search for prior rights that could conflict with the relevant trademark. If a conflicting right existed, the Agency would send a search report to the applicant.

It was then for the applicant to decide if he wanted to proceed with the application. Accordingly, the Office could not reject the application with reference to conflicting rights.

The system with search reports will continue under the new Act, but from 1 January 2019 the report will only be prepared if requested by the applicant. By making the search report optional, applications may be processed faster and more efficiently.

A search report does not take use-based rights into account, because they are not recorded in any register. A search report is therefore no guarantee that you, as an applicant, do not infringe prior rights, including rights based on use. However, a search report is still a good indicator of the existence of other registered rights. If you also make your own searches on the internet, you can be reasonable assured.

If you are a professional user of the trademark system, or if your business is represented by a representative when filing the application, a search report may not be necessary. In all other cases, we recommend that you ask for a report. 

5. Infringement of business names

In the new Act, it is specified to which extent a business name can prevent registration and use of a trademark. 

For a business name to prevent registration and use of a trademark, it must:

1. be registered with the Central Business Register (CVR) and have a more than locally defined nature
2. be identical or confusingly similar to the trademark 
3. be used for identical or similar goods or services that are marketed by means of the trademark

When selecting a trademark, you should therefore still assess if your trademark is likely to infringe the name of another business.

Kromann Reumert’s assistance

Kromann Reumert offers to assist you with solutions and clear-cut advice in relation to your trademark. We have extensive experience within trademark protection and enforcement. If you have any questions in relation to the new Trademarks Act or the protection and enforcement of your trademarks, then do not hesitate to contact us.