March 17 1999
As of January 1 1999 the Danish Patent Office changed its practice for registration of new trademarks. The purpose of the change is to ensure continued quick and efficient trademarks registration in Denmark for the benefit of trade and industry. At the same time, it has been important to ensure that existing trademarks continue to be well protected.
The change to the trademark system is a natural consequence of international developments. According to previous practice, the Patent Office would refuse a new application if a confusingly similar trademark or company name was already registered. A continuation of this practice would mean that it would become very difficult to have a new trademark registered in Denmark, as the Patent Office would not only have to evaluate a mark on the basis of the many national rights (approx. 140,000 trademarks are registered in Denmark, and the Patent Office receives approx. 10,000 new applications every year) but the Office would also have to take into consideration the approx. 90,000 pending EU trademark applications - a number increasing by approx. 30,000 each year.
As applications are not refused in the EU trademark system merely because of confusing similarity with existing rights, the previous practice of the Patent Office could lead to a situation whereby the registration of a mark may be refused in Denmark, yet the same mark could be registered as an EU trademark if the application was filed with the EU trademark office. When the Trademarks Act was last amended in 1996, it therefore became possible for the Patent Office to adapt its procedure to this international development, and the Office has used the intervening time to determine the new practice. This has been done in close cooperation with representatives of the various users.
When, in the future, the Patent Office receives a trademark application, the Office will, as previously, investigate whether the mark fulfills the conditions for registration according to the Danish Trademarks Act, but in the future the Patent Office will only enforce the so-called absolute conditions for registration, such as whether the mark lacks distinguishing features, is illegal or misleading. If one or several of these conditions have not been fulfilled, registration will be denied.
If the mark applied for is only confusingly similar to an existing trademark, company name or personal name, the applicant will be informed about such rights in a so-called search report. Following this, it is up to the applicant to decide whether the application is to be continued without changes, if it is to be restricted etc. If the applicant decides not to take into consideration the existing rights, the trademark owner may file an opposition, and if this opposition is complied with, the new registration may be deleted. The proprietor of the mark can still of course also pursue the matter at the courts in case of infringement of the trademark. Thus, it is essential that the rights of a trademark proprietor are not affected by the changes in practice. However, in the future it will be important for a trademark proprietor to keep up with new trademarks that are registered or brought into use. As something new, the Patent Office offers to monitor trademark rights. This implies that the Patent Office automatically informs the trademark proprietor when a trademark closely similar to the trademark of the relevant trademark proprietor is being registered in Denmark. Also, it is possible to follow the new registration on the Internet, as the Danish Trademark Gazette is accessible through the Patent Office's home page (www.dkpto.dk/tidende.htm).
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