Amendments to the Danish Trademarks Act

Date 19 jul. 2018
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Introduction

A draft bill amending the Danish Trademark Act, the Danish Collective Marks Act, the Danish Designs Act and the Danish Gas Safety Act was submitted for public consultation by the Danish Patent and Trademark Office (“DKPTO”) on 25 June 2018. The consultation deadline is 3 August 2018.


The purpose of the bill is to modernize the regulation of trademarks and to harmonize the Danish trademark system and the EU trademark system. The purpose of the changes is to help ensure an efficient and user-friendly registration system tailored to the needs of the users and the technological development.


The bill transposes Directive (EU) 2015/2436 of 16 December 2015 to converge the laws of the Member States relating to trademarks.


In addition, the bill transposes several amendments to the Danish Designs Act and the Danish Gas Safety Act and repeals the Danish Collective Marks Act.


Below are the most significant changes to the current rules in the Danish Trademark Act.

 

Fee Change

The current fee for a Danish trademark application is DKK 2,350. The application fee includes registration of the trademark in up to three products or services classes. The registration fee for registration of the trademark in more than three classes is DKK 600 per class.


With the bill, the fee for a Danish trademark application is reduced to DKK 2,000. The application fee will only include registration of the trademark in one product or service class. One additional product or service class may be purchased for the fee of DKK 200, while any products or services classes in addition to this will cost DKK 600 per class.


The purpose of the change is to limit the future use of goods and services classes so as to ensure that the Register of Trademarks is not filled with registrations that the applicant does not really need.

 

Graphic Reproduction cancelled

The bill proposes to remove the requirement that for registration of a trademark the trademark should be reproduced graphically. The trademark may only be reproduced in an appropriate manner using generally available technology so that the content of the trademark can be clearly and accurately determined.


It is our expectation that the change will lead to an increased registration of any trademark in the form of a sound, a scent, a taste and a color, as the condition that a trademark must be reproduced graphically has been an obstacle to the registration of such types of trademarks.


Establishing a Trademark by Commencement of Use

The bill proposes to uphold the option of a Danish trademark being established by way of commencement of use. Certain requirements still apply to the intensity, duration and geographical scope. It is stated in the bill that the use must be of more than local significance.


The conditions for a trademark being established by way of commencement of use are that (i) the trademark must be used on a continuous basis and (ii) the trademark must be used in Denmark.


The Objection Period for Trademark Applications is advanced

The bill proposes that the period in which a third party may object to the validity of an application for registration of a trademark is prior to the registration of the trademark. An application for registration of one or more trademarks must thus be published before the trademark can be registered.


The reason for this change is that the administrative procedures for objections to a trademark application aim to facilitate easier access for third parties to question the validity of a trademark application or registered trademark. The bill thus proposes that the period for making objections is placed before the trademark registration, whereas today the period is placed after the trademark application and registration.

 

Measures against counterfeit Goods

In accordance with the new rules, the proprietor of a registered trademark may prevent goods from non-member countries that infringe on a trademark in all customs situations, including transit, transshipment, storage and free zones, to be imported into the Danish customs territory by a third party. However, it is stated in the proposed bill that barriers to the free trade in legal goods are, in principle, contrary according to the EU.


Preparatory actions in the form of affixing a mark which is identical or similar to a trademark, including packaging, labels and marks, may also be prohibited.


The requirement that the relevant use of the trademark is for commercial purposes only remains unchanged.

 

Our Comments

It is our opinion that the proposal for a lower fee will benefit many businesses. Often, applicants only need to register a trademark in one or two products or services classes, and therefore it would be advantageous with a more flexible composition of the fee for a trademark application depending on the specific need.


Denmark is one of the last countries in the EU to recognize that a trademark can be established by way of commencement of use. Therefore, the question of whether Denmark is to recognize a trademark established by way of commencement of use has been discussed at the three user meetings of the Danish Patent and Trademark Office (DKPTO). Several of the countries that are usually comparable  to Denmark, including Sweden and Germany, have previously imposed a requirement that a trademark must be finally incorporated before a trademark established by way of commencement of use is considered as being established.


In an area with constant development and in which we often experience violations, the new Danish Trademark entails good actions that make the rules more modern and flexible. In addition, it is more convenient that third parties have the opportunity to represent or object to an applied trademark application before the trademark is finally registered.

 

 

If you have any questions or would like more information about the above, please do not hesitate to contact lawyer and partner Pernille Nørkær (pno@mwblaw.dk), Junior Associate Andreas Egeblad Arendt (aar@mwblaw.dk) or law student Emil Bech (elb@mwblaw.dk).

 

The above does not constitute legal counselling and Moalem Weitemeyer Bendtsen does not warrant the accuracy of the information. With the above text, Moalem Weitemeyer Bendtsen has not assumed responsibility of any kind as a consequence of any reader’s use of the above as a basis for decision or considerations.