The value associated with a trademark has never been greater than just now. At the same time, legislation in the area has never been more complicated. Here we can help you.
The value associated with a trademark has never been greater than now. At the same time, legislation in the area has never been more complicated. Therefore, it is important that you and your company get specialized advice in protecting your trademarks, to meet and limit the risk of violations and abuse.
In fact, a trademark right implies the right to prevent others from using an identical or "confusingly similar" trade mark in a professional context. In Denmark, you can obtain trademark rights through registration or by simply using the trademark in business.
Løje, Arnesen & Meedom can help your business with questions related to trademark registrations at all levels: National, Regional (eg EU) and International. Within the EU, trademark protection can be achieved in all EU member states at one time with just one application.
WE CAN HELP WITH
- Trademark searches
- Registering trademarks worldwide
- Brand monitoring
- Renewal and transfer of trademark rights
- Opposition and cancellation proceedings
- Litigation, including actions for seeking evidence and injunction actions
- Strategic advice on trademark protection
- Contractual matters, including licensing
Info about trademarks
It is vital to secure your trademark, but for third parties it may be a jungle to navigate. Løje, Arnesen & Meedom is experienced in translating legislation into understandable practices. Below you can read more about trademarks. If any questions arise, please feel free to contact us so we can discuss your options.
A trademark is the link between companies and their customers - these are the characteristics used to distinguish a company's goods and services from the goods and services that its competitors offer. The trademark is a signal to the customers about where the product originates. Once a customer has bought something that they are satisfied with, there is a great chance that the customer will next time go for the same brand. But a brand can be more than that; A trademark often carries the company's values.
A trademark may consist of one or more words, of a logo, a device, or a combination of these elements. It may also consist of the appearance of the product or its packaging - it is almost only the imagination that sets limits. But it is a prerequisite for protection that the trademark is distinctive; i.e. that it is not descriptive of the product. A trademark must thus be suitable for distinguishing one's products from competitors. Therefore, the trademark must not describe the product itself, nor should it be a common term for the product. Even common words such as apple, window and menu can thus be used as trademarks as long as it happens to goods that have no direct connection to the meaning of the word.
In practice, trademarks are divided into word marks and figurative marks. The word marks consist exclusively of letters and / or numbers in a regular font, while figurative marks are a collective term for all other types of trademarks, including logos, words in special graphic designs, three-dimensional marks, moving marks, etc.
A word mark gives the widest protection, as it basically gives exclusive rights to the word, regardless of the actual appearance. The figurative mark, on the other hand, usually only provides protection for the specific design. The figurative mark, on the other hand, also provides protection for the figurative part of the trademark. Registration of the mark in black and white usually also provides protection in other colors and color combinations, but this principle may change.
When are trademarks confusing?
It can be very difficult to decide whether two trademarks are confusingly similar - and if there is a legal conflict.
Confusion must be clarified by comparing the two marks with each other and, second, the scope of use of the two marks. Confusion requires that both trademarks are confusingly similar and that the trademarks are used for the same or similar goods or services.
The assessment of the confusing similarity is based on a comparison of how the trademarks appear (the visual expression), how they sound (the auditive expression) and if they have a meaning. Finally, one should consider whether all or part of the trademarks involved are 'strong' or 'weak' (descriptive). It is a very comprehensive evaluation when these issues are to be decided and often the decision is very concrete.
Two identical trademarks may be used at the same time without infringing each other, if they are used for very different goods or services. When comparing goods and services, one looks at whether these are sold through the same sales channels. The World Intellectual Property Organization (WIPO) in Switzerland administers the International Nice Treaty, which defines a list of goods and services and their relationships. This list is crucial to assess whether goods and services are identical or similar.
The decisive fact of whether trademarks are confusingly similar or not are not so much the market's perception as it is a more theoretical comparison of the two brands. However, there is no doubt that actual confusion in the market can play a role. It is therefore very important to save examples of this if you want to conduct a lawsuit.
How is trademark protection achieved in Denmark?
In Denmark, we have the special situation that a trademark right can be obtained either by registration or by using the mark. However, for both rights, the principle of "first in time, best in law" applies. In principle, the right obtained by simply using the mark is as good as the registered right, but it can be harder to prove and in practice is somewhat more difficult to enforce.
In order to maintain a trademark law obtained through use, it is important that the mark is used continuously, which is not necessary for the registered trademarks. Furthermore, upon registration it is possible to obtain protection also for goods and services for which the mark has not been used while the right obtained through actual use applies only to the goods and services for which the mark is actually used. Finally, by choosing to register the trademark, you can wait up to five years to initiate use of the mark without losing the right.
It is quite unusual for Denmark to offer a trademark right based on use, as most countries require a trademark to be registered in order for it to be protected.
How is a trademark registered in Denmark?
Danish trademarks are registered with the Danish Patent and Trademark Office, which is the official Danish authority. When a trademark application has been filed, the Patent and Trademark Office examines whether the mark applied for is distinctive - that is, whether it can be used as a trademark - and whether it is misleading or otherwise contrary to applicable law. For example, it is not free to anyone to use the terms "bank", "lawyer" or "pharmacy".
In addition, a trademark must be capable of separating companies' products from each other. Therefore, a trademark must not describe the product itself, nor must it become a common term for the product. The Patent and Trademark Office also compiles a search report listing trademarks, company names and personal names that may be confusing with the mark applied for. This search report is for guidance only.
If there are no barriers to the mark, it is registered and the registration is announced to give third parties an opportunity to lodge an opposition. If no opposition is lodged before the expiry of the deadline (two months), the registration is final. Although the opposition period has expired and the mark is thus finally registered, third parties may still request the mark to be repealed.
However, once the trademark is registered, there is a relatively high probability that you do not violate the rights of others by using its trademark.
How is a trademark registered abroad?
In most countries, trademark rights can only be obtained through registration. Thus, no rights can be obtained simply by using the trademark: No registration, no right. At this point, Denmark differs from most other countries.
If you want to protect your trademark abroad, there are several options
You can choose national applications in the relevant countries, EU applications and / or international registrations through the Madrid Protocol. It often pays to combine the various options depending on the company's needs.
What is an EU trademark?
The EU trademark is very often an interesting alternative to national trademark registrations, not least because the vast majority of Danish exports go to the other EU countries. The EU trade mark is a so-called unified system, which means that the EU registration applies to all member states of the European Union. Administratively the system is governed by the EU Union Trade Marks Office (EUIPO) in Alicante, Spain.
There are major benefits associated with the EU system.
Through just one registration, protection is obtained for the entire territory of the Union.
You only have to renew one registration. If you have older national rights in the member states, these rights can be continued in one's EU registration (seniority). In principle, it is sufficient to comply with the use requirement for the EU registration when the trademark is used only in one EU country. Recordal of changes in the holder name or transfers can be done centrally. Finally, there is the advantage that the EU trade mark is automatically extended to apply to the new nations that are admitted to the European Union.
What is an international registration?
International registration via the Madrid Protocol is a flexible and inexpensive solution if you wish to register your trademark abroad. In order to use the system, a Danish or EU trademark application or registration is required. With this basis you can apply for international registration in the countries that are covered by the system by simply selecting which countries you are interested in. Pt. There are more than 95 countries with, and more and more people are coming.
The advantages of this system are:
Protection is obtained in many countries through one single application procedure.
Renewal takes place centrally.
Recordal of owner changes, transfers etc. takes place in one place.
It is possible to expand the international registration with more countries or with more classes if the international registration includes these classes.
How long time does a trademark right exist?
A Danish trademark registration is valid for 10 years from the date of registration and can be renewed indefinitely with 10 years at a time. However, you must be aware of the rules of use if the trademark is more than five years old. If the trademark has not been used within the last five years, others may request the registration to be canceled. If the trademark has been used only for some of the goods or services for which it is registered, the trademark may only be maintained for the goods and services it has been used for.
It is advisable to store and date material that documents the use of trademarks, including invoice copies, brochures, advertisements and the like. The same applies to the use that even resellers or agents stand for both in Denmark and abroad.
It is important that the trademark is used in the form it is registered as otherwise it is not certain that the duty of use is met - unless the registration includes a word mark that may be used as desired. If the registered trademark consists of a graphic element or logo, but is used in another form, consideration should be given to registering the new design. Is the trademark right based on use instead of registration, the right ends when the brand is no longer used.
Can you get a trademark right by using it?
Yes, you can in Denmark and some other countries.
This is however only true in very few countries in the EU, and if you want rights to your trademark in, for example, Germany, the Benelux countries and the other Nordic countries, it is essential to register your trademark. If you have not registered your trademark in these countries, you may risk claims even from companies that have not used their trademark at all, to the extent they have registered their trademark.