INTA Comments on Legislative Proposal for Amendments to the Danish Trademark Law

Published: September 1, 2018

Ellen Breddam Plougmann Vingtoft Hovedstaden, Denmark

The Danish Patent and Trademark Office (the Office) has drawn up a legislative proposal for changes in the Danish trademark law. The proposed bill reflects European Union conformity with the implementation of Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015 (the Directive or TMD), in several areas-for example, advancing the opposition period and initiatives to minimize the risk of counterfeiting.

The bill also contains amendments regarding trademarks acquired through use, and it proposes different types of search reports.

On August 2, INTA submitted comments to the Office on the draft amendments to the Trademark Act, notably on the below topics.

Individual Trademarks
The new bill follows the legal text from the Directive closely and therefore introduces a new term: an “individual” trademark.

Reading the Danish text, it is difficult to see how individual trademarks are different from other subcategories, such as certification trademarks and collective trademarks. INTA has therefore suggested clarifying that certification marks, collective marks, and marks acquired through use are all subcategories of individual trademarks, thereby making the individual registered trademark the standard category.

First-to-Use Principle

Denmark is one of a few European countries to recognize the first-to-use principle.

Until now, a definition of “in use” was not specified by the Act. In fact, it has been up to the courts to decide whether the use in question is extensive enough to allow the holder to have a trademark right covering all of Denmark, rather than covering a limited geographic area within Denmark.

The new bill changes this and introduces two criteria: “more than local significance” and “locally defined character.”

It is a concern that the addition of these criteria, and their connotation in the original Danish wording, may lead to a more restrictive interpretation of the law by the courts in Denmark. Therefore, INTA has respectfully requested that the Office reconsider the wording so that the current practice of granting protection to marks in use is preserved.

As INTA stated in its comments, “The proposed new Article 10(3) establishes that a trademark does not entitle its owner to prevent third parties from making commercial use of earlier signs which have only a locally defined character where the earlier sign is used within the limits of the area in which it is recognized. INTA recommends that the term “locally defined character” in Section 10(3) be replaced by “the knowledge of the earlier sign is only local.”

Search Reports

The Office issues search reports, and it will continue doing so with the introduction of the new bill. In fact, the bill proposes that applicants can choose between three different models: (a) a stripped-down model, i.e., no search reports; (b) a search report similar to the one currently in practice in Denmark; or (c) a search report with an appraisal/evaluation.

Search reports with an appraisal/evaluation would be very similar to an availability search, which cannot be made merely by looking at the marks and the goods themselves. In fact, the process of determining whether a trademark conflicts with another involves not only a comparison between the marks and the goods and/or services but also an assessment of the use of the earlier mark, which is outside the Office’s competence. As such, the Association has asked that the Office reconsider the legislative procedure, as the introduction of such searches may raise doubts about the impartiality of the Office and ultimately result in legal uncertainty.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association