Unregistered trade mark protection in Denmark: A fairy tale too good to be true?

No, it is true – you can actually acquire full trade mark protection in Denmark by commencing use of a trade mark without formally registering the trade mark.

The trade mark protection is obtained for the goods and services for which the trade mark is used and will stay valid for as long as the trade mark is continuously used.

This provision in the Danish Trade Marks Act of 1991 might at a glance seem similar to provisions in the trade mark acts of the other Nordic countries – Sweden, Finland and Norway. However, in these countries it is a requirement that the trade mark has become established and/or well known before a trade mark right through use is obtained. There is no such requirement in the Danish Trade Marks Act.

To establish the trade mark right in Denmark there must be real commercial use within the Danish territory, encompassing Denmark, the Faroe Islands and Greenland. There is no requirement for the scale or duration of use – the right can in principle be obtained if the trade mark is marketed in shops and in the daily press for one day.

Two examples from the Danish courts illustrate this. In the first case the trade mark belonged to a US company, and although the trade mark had been used in adverts in the international periodical Nature from 1989–2001 which had 250-375 Danish subscribers during this period, this was not deemed sufficient to acquire trade mark protection. This was both because there were no actual sales in Danish shops and the small Danish circulation of Nature. In the second case marketing material with the trade mark had been forwarded by a Danish company to potential customers and a press release had been sent to the media leading to mentions in the Danish newspapers. This was deemed sufficient to acquire trade mark protection.

Even use by “others” might in some instances qualify as real commercial use, i.e. in cases of lawful parallel imports as this concerns the marketing of real goods with the genuine trade mark.

However, relying on trade marks acquired through use calls for extra attention. Trade mark owners tend to forget to save properly dated documentation of the first and continuous use of the trade mark, thereby causing difficulty in proving the priority date from which the right has been acquired and in turn that they hold the older right in conflicts with younger rights.

As stated above, the trade mark protection of a right obtained through use ceases to exist when the use of the trade mark stops. However, mere temporary interruptions of the use do not bring the protection to an end.

In summary – don’t despair if you are facing a trade mark infringement in Denmark but don’t hold a registered trade mark to fight it. If you have used your own trade mark in Denmark you will most likely have some trade mark protection acquired through use to support your fight.

Originally published in BrandWrites 8th Edition.

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