• The option to comment on trade mark applications under examination without becoming a party to the case
  • Goods in transit: the opportunity to prevent third parties shipping infringing goods to Denmark and the opportunity to prohibit preliminary actions for commercial purposes
  • The continuous acknowledgement of the "First user" principle
Status of the implementation into Danish law 

The implementing draft was approved at the third reading in the Danish Parliament the 20th November 2018. The Danish government implemented the Directive into Danish national trade mark law on 1 January 2019.

Comments on third party trade mark applications during examination 

The regulation in force implies that the application for administrative termination can only be made when the registration of the trade mark is published. The approved draft suggests that the period for filing an opposition will be in advance of the registration of the trade mark and that it can be made from the time when the application is published (article 19).

The implementation of the Directive will include the option to comment on trade mark applications of third parties during examination (article 22). This implies that a third party, without becoming a party to the case, can alert the Danish Patent and Trademark Office of any issues with the application regarding absolute grounds for exclusion, e.g. the application is devoid of distinctiveness.

Graphical representation of trade marks 

The need to represent a mark graphically as a requirement for registration will be removed. The implication of this is that it will now be possible to register a sound trade mark by filing an audio file instead of filing musical notation. It is also possible to register a multimedia trademark that can consist of both sound and images.

Trade mark infringement by goods in transit

The approved draft provides that the owner of a registered trade mark may prevent third parties shipping infringing goods to Denmark from outside the EU commercially (article 5(1)). This includes all actions related to customs, e.g. transit, temporary storage and temporary import even if the goods are not designated to be marketed in Denmark.

The approved draft also suggests that the owner of a registered trade mark can prohibit preliminary actions for commercial purposes, e.g. third party's placement of signs that are identical or similar to that of the trade mark owner on packaging, labels, tags and security features. In addition to this the owner can also prohibit actions in regards to offering the products for sale, marketing or storing or importing or exporting the aforementioned. (article 5(3)).

New fees

Today, the fee for a trade mark application amounts to 2.350 DKR and covers up to 3 classes in the Nice Classification. The approved draft suggests that in the future the fee is assessed differently which implies that the starting fee amounts to 2.000 DKR and covers 1 class in the Nice Classification. If the applicant wants to add more classes to the application, the applicant has to pay an extra fee. The extra fee amounts to 200 DKR for the first extra class. For every additional class the extra fee will amount to 600 DKR per class (article 60 a). The purpose of the change in fee is to avoid the trade mark register being filled with unnecessary numbers of trade mark registrations.

The acknowledgement of the "First user" principle: 

The principle entails that it is possible to acquire exclusive rights to a trade mark by use of the trade mark in Denmark and not only by registration. The principle is part of the approved draft even though it was debated in the hearings organized by the Danish Patent and Trademark Office whether such principle should still be acknowledged in the future. The regulation now in force does not specify when a trade mark is regarded as acquired by use. The approved draft states that the use of the trade mark shall be more than local in order to suffice (article 3, number 3).

Search reports 

In the approved draft it is suggested that an applicant (for a fee of 700 DKR (article 60 a (2)) shall have access to a more detailed assessment of the risk of confusion for each of the earlier rights which the Danish Patent and Trademark Office includes in their search report (article 60a(2) cf. article 11 (2)). The purpose of the provision is to place the applicant in a better position in terms of assessing the implications of earlier rights, and in this way hopefully reducing the risk of infringement proceedings.

In the approved draft a fast track system is introduced which allows companies to opt out of the search rapports (article 11 (3)). In this way the regulatory process will be faster and more efficient. This will be in the interest of major companies that often are professional users of the trade mark system.

Precision of the rules on company names as relative grounds of refusal

The approved draft specifies when a company name can constitute a relative ground of refusal. The approved draft suggests that a company name will constitute a relative ground of refusal when the company name is registered in the Danish Central Business Register (CVR) and has more than a local character. Furthermore, the ground of refusal requires a risk of confusion or, in case of a well-known company names, that the use of the trademark would unreasonably influence or damage the distinctiveness or reputation of the company name. (article 15 (3, number 4)).

Written by Peer Petersen, Sebastian Juul Mogensen