Trademarks

A trademark is a sign that distinguishes the goods or services of the trademark owner from those of others. It may be one word or several words, a device, a logo, a slogan or a three dimensional sign.

• A trademark is amongst the most important assets of a business.

• A trademark promotes product identity in the marketplace, and helps establish
a businesses reputation.

The trademark attorneys at HØIBERG have extensive experience in the field of trademarks. We will assist you in designing an overall trademark strategy that ensures protection and enforcement of your trademark rights.

For information on trademarks, please click on the following links.

Trademark basics

Why choose a trademark?

A trademark is amongst the most important assets of a business – it is the most essential feature of any marketing strategy.
Creating and protecting your trademark establishes your corporate identity and enforces your position in the market.
A trademark allows buyers to distinguish your product or service from other similar products or services in the market.
A trademark is forever - provided it is used and renewed.

Why protect a trademark?

Registration is the first step towards protecting your trademark. The advantages of registering over a non-registered name or trademark is that:

In most countries trademark rights are only acquired through registration.
It is easier to prove a right to a registered trademark, and thus prevent infringement e.g. through injunctions.
A registered trademark will increase the value of your business should you wish to sell it at a later stage.

Where to protect your trademark

The number of jurisdictions in which protection is sought will be determined by a market analysis of your current and potential markets. Based on this analysis, we may advise you to seek:

One or more national registered trademarks;
A European community trademark application; or
An international application (Madrid Protocol); or
A combination of these.

We will provide you with a cost estimate based on the level of protection you choose.

How to mark your trademark

The symbol ® should only be used when a trademark is registered, and only in countries covered by a registration. It should never be used on an unregistered mark.

If your trademark is not registered yet, or in jurisdictions where it is not registered, the symbol TM may be used to indicate that you consider this to be your trademark.

These symbols not only allow buyers to differentiate your product or services from others – they indicate to competitors and those thinking of pirating your name that you have legal rights and are prepared to defend them.

Filing a trademark application in Denmark

A trademark is allowed protection in Denmark if the mark consists of one word or several words, a name, a device, a logo, a slogan, a three dimensional sign - or even a smell, sound or icons, provided that the mark is in conformity with the Danish Trademarks Act. Current practice also shows that marks consisting of, for example, one letter and one number or sign are granted protection. Examples are B8 for furniture, M! for magazines.

The trademark attorneys at HØIBERG will advise you as to the registrability of your mark in Denmark.

Complete filing requirements:

Information about the trademark.
Device marks: Preferably an electronic representation of the trademark in JPG format. This also applies if the mark is in colour.
Full information about the applicant, i.e. name, address, and cooperate form.
Specification of goods or services to which the mark relates.
Priority documents need only be provided on request.
Payment of the filing fee.

Prosecution

An application is examined in respect of formalities and on absolute grounds, i.e. lack of distinctiveness, geographical origin etc.
Once formalities are in order, a search for prior conflicting marks is conducted and the search result is forwarded to the applicant for information.
When accepted for publication, the trademark application will be published for opposition purposes in the Danish Trademarks Gazette. The opposition period runs for 2 months.
If no oppositions are filed against registration of the trademark, the trademark will proceed to registration. The registration is due for renewal after 10 years counting from the registration date.

Compulsory use

In order to fulfil the user requirements in Denmark, use of a Danish trademark must commence within five years from the completed prosecution of the application. The Danish Patent and Trademark Office (the Danish PTO) will notify you of this date in connection with the registration procedure, but it is up to the trademark owner to observe the date.

Renewal

A Danish registered trademark may be renewed every 10th year from the date of registration. A 6 month grace period exists following the expiry of registration in which the trademark may be renewed by payment of a late fine.

Infringement watch

Although the Danish PTO conducts searches among prior registrations and applications they are not authorised on their own accord to prevent registration of a younger mark on relative grounds. Therefore, trademark proprietors of earlier marks who wish to prevent registration of later, conflicting trademark applications, must file an opposition against registration of such marks. This should be done within the two months' opposition period.

Establishment of a watch over your trademark is, therefore, highly recommended. This means that you receive information of any new, published trademark which is identical or is considered to be confusingly similar to your trademark within a given geographic area. The geographic area could be one specific country or region, such as the EU or Europe, or even worldwide.

Please contact us if you would like any further information.

European Community Trademark

It is possible to register a European Community Trademark (CTM) covering all the 25 members of the European Union. The advantage of this unitary system is that protection may be obtained in all 27 member states via a single application.

The EU countries are presently:

Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom.

Advantages

A CTM is valid everywhere in the European Community, and gives the proprietor exclusive rights enabling him to prohibit any third parties from using the sign in their commercial or industrial activities.
Registering a CTM requires only a single application, which reduces costs.
A CTM is citable against both later conflicting CTM applications and conflicting national applications.
A CTM application can claim seniority from an earlier national registration in any EU member state.
A CTM establishes a basis for priority, which may be claimed - within six months - in national and international applications.
The use requirement for a CTM requires use in only one member state.
Protection and enforcement of a CTM may be sought in the designated court of any member state, and decisions are effective across the EU.
If registration is denied by OHIM the CTM-application may still be converted into national applications with no loss of prior rights.

Who may apply?

The CTM system is open to both EU and non-EU applicants. Non-EU applicants must appoint a professional representative from one of the EU member states who is entitled to act before the Office for Harmonization in the Internal Market (Trade Marks and Designs) (the OHIM).

Language

An application can be filed in any of the national languages of the EU member states, but one of the official languages of the OHIM must be chosen for the prosecution of the application. These are English, French, German, Spanish and Italian.

Priority claim

Priority can be claimed in a CTM application from a national application in accordance with the Paris Convention. Similarly, the filing date of a CTM establishes priority for both national and international trade marks.

Seniority claim

If a trademark is already registered by the same proprietor in one or several of the EU member states, it is possible to claim seniority from a prior registration. This means that a CTM application will enjoy the same validity as the seniority registration. This means that national registrations may be allowed to lapse.

Prosecution

An application is examined in respect of basic formalities including payment of the application fee and specification of the goods and services in accordance with the international classification.
Once formalities are in order, a search for prior conflicting rights is made in the CTM register. The applicant receives the search result and proprietors of possible cited CTMs are notified by OHIM.
The application is examined on absolute grounds, i.e. lack of distinctiveness, geographical origin etc.
When accepted for publication, the trademark application will be published for opposition purposes in the EU Trademarks Gazette. The opposition period runs for 3 months and is non-extendable.
If no oppositions are filed against registration of the trademark, the trademark will proceed to registration. The registration is due for renewal after 10 years counting from the application date.

Compulsory use

Use of an EU trademark must be commenced within five years from the registration date in at least one EU state.

Opposition

The EU trademark system is a so-called opposition system. This means that if trademark proprietors of earlier marks wish to try to prevent registration of later, conflicting CTM applications, they must file an opposition against registration of such marks.

When an opposition has been lodged, a two months "cooling-off" period begins. During this period, the parties may wish to negotiate for an agreement. The "cooling-off" period is extendable upon request of both parties. If a settlement is reached and the opposition is withdrawn within the "cooling-off" period, the opposition fee will be refunded.

International applications under the Madrid Protocol

In addition to the CTM or as an alternative to the CTM, it is possible to obtain international registration of trademarks under the Madrid Protocol. Obtaining protection under the Madrid Protocol involves a single application based on a national trademark application or registration, designating protection in selected member states. A Madrid Protocol application may also be based on a EU application/registration.

There are currently nearly 80 members to the Madrid Protocol, and more are added every year.

Advantages

Simple and flexible system requiring only a single application.
Additional states may be designated after the initial application has been submitted.
Refusals affect the application only in those states where it is refused.
Centralised renewal for all states.

Who may use the Madrid Protocol system?

The Madrid Protocol system of international registration of marks may be used only by someone who has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Protocol.

Geographical scope of protection

An application for international registration must designate one or more countries (not the country of origin) in which the mark is to be protected. Further countries may be designated subsequently. A country may be designated only if that country and the country of origin are both parties to the Protocol treaty.

Priority

Priority from a national application may be claimed in accordance with the Paris Convention. A CTM application may establish priority under the Madrid Protocol.

Prosecution of the international registration

Formalities: Once formalities of the international application are in order, the mark will be recorded in the International Register and will be published in the WIPO Gazette of International Marks.

Designated countries: The International Bureau of WIPO will notify each country in which protection has been requested (whether in the international application or subsequently). Each designated country has the right to refuse protection, within the time limits specified in the Protocol. The time limit for a country to notify a refusal can be up to eighteen months (or longer in the case of a refusal based on an opposition).

Dependence on basic registration or application: For a period of five years from the date of its registration, an international registration is dependent on the mark registered or applied for in the country of origin. If the basic registration ceases to have effect, for example due to non-renewal, within this five-year period, the international registration will no longer be protected and may be cancelled. Similarly, if the international registration was based on an application in the country of origin, it will be cancelled if that application is refused or withdrawn within the five-year period. After the expiry of this period of five years, the international registration becomes independent of the basic registration or basic application.

Renewal: The registration period of an international registration is ten years. It may be renewed for further periods of ten years on payment of the prescribed fees.

Analysis and documentation

Before commencing preparation of marketing material, we recommend that an availability search be conducted in order to establish whether your chosen trademark is available in the market for the goods and/or services in question.