Intellectual property rights

LETT counsels international groups as well as small and medium-sized companies on issues concerning intellectual property rights (IP rights), including registration of the rights, where applicable. LETT also assists clients in drafting license agreements and provides representation in litigation concerning infringement of IP rights.

The Danish Trademarks Act is based on the EC Trademark Directive (1989/104/EEC).

 

Trademarks may consist of any sign capable of distinguishing the goods or services of one enterprise from those of other enterprises and capable of being represented graphically, in particular: words and word combinations; letters and numerals; pictures and designs; or the shape, equipment or packing of the goods.

 

A trademark with legal force in the Danish territory can be obtained in four ways: 1) by a national registration with the Danish Patent and Trademark Office (DKPTO), 2) by unregistered use, 3) an international application under the Madrid Protocol system, and 4) registration of a Community Trademark (CMT) within the EU.

 

A national trademark right may be established by registration with the DKPTO. Registration can be done online. Denmark has adopted the Nice Classification for registered trademarks. The registered classes offer an important indication of possible infringing trademarks. Registered trademarks are published in the Danish Trademark Gazette. Within 2 months from the date of the publication, opposition may be filed against the validity of the registration. Decisions rendered by the DKPTO are subject to administrative appeal to the Patent Appeals Board. Decisions by the Appeals Board are subject to judicial review in the Danish courts.

 

As indicated above, a trademark right may be established by use of a trademark in Denmark for the goods or services for which it is to be used and for which it is continuously used. There must be marketing activities. Use of a trademark, which according to its nature is excluded from registration, such as indications describing the kind or the purpose of the goods, will not establish any right.

 

The unregistered trademark confers equal rights to the registered, but there are many benefits of registration – in particular evidence of the existence and the extent of the right.

 

The protection period for a registered trademark is 10 years from the registration date, but the registration is renewable for consecutive 10 year-periods. If the trademark has not been used for 5 years, the registration can be revoked in whole or in part. Trademarks established through use remains in force as long as it is used continuously.

 

Trademarks are transferable in whole or in part. It is not a condition for validity that the transfer is entered in the register of trademarks, but if a registered trademark is transferred, it shall on request be entered in the register of trademarks.

 

In 1996 Denmark ratified the Madrid Protocol. Therefore, it is possible to obtain trademark right in Denmark through designating Denmark in an application for international registration according to the Madrid Agreement.

 

As Denmark is a member state of the EU, an application and registration of a Community Trademark (CMT) with the Office of Harmonization in the Internal Market (OHIM) will have effect on the Danish territory as well as in other EU member states.
   

The Danish Act on Copyright (Copyright Act) is based on the multitude of EC Directives related to copyright. Denmark is also a party to most of the international conventions related to copyright including inter alia the Berne Convention, the World Copyright Treaty (WCT) and the Word Trade Organisation (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

 

The copyright protection originates when a literary or artistic work, which is the result of the author’s own intellectual contribution, is created. Copyright protection is not contingent on registration. In fact it is not possible, unlike in some jurisdictions, to register copyrights in Denmark, even for evidentiary purposes. The protected works may be literature or art expressed in different forms, such as fictional or descriptive representation, graphic works, a work of fine art, architecture or applied art. Maps, drawings and computer programmes are considered as literary works. For computer programmes the relevant projection scheme is therefore in most instances the protection afforded under copyright. The Copyright Act also protects neighbouring rights, such as sound and moving picture recordings, radio and TV broadcasts, catalogues, databases, photographic pictures, press releases and the performance of literary or artistic work.

 

The duration of copyright protection is the lifetime of the creator plus 70 years, while the duration of the protection for neighbouring rights is somewhat shorter, generally 50 years and 15 years for databases.

 

The copyright belongs to the author but it can be assigned in whole or in part. The author may cancel the agreement if the assignee has not exploited the work within a reasonable time or at the latest 5 years after the time where the agreement has been fulfilled on the part of the author. It should be noted that similar to many European copyright systems Danish copyright law recognises certain moral rights which in some instances can be enforced in perpetuity.

The Danish Designs Act came into force in 2001 by the implementation of the EU Directive on the protection of designs. EC Regulation No. 6/2002 on Community Designs (Design Regulation) also applies in Denmark.

 

Both according to the Danish Designs Act and the EC Regulation, design protection may be obtained for the appearance of a novel product or a part of a product that has an individual character, in particular in concern to lines, colours, shape, structure or materials. Protection may also be obtained for three-dimensional products. Design protection is also extended to un-registered designs pursuant to the Design Regulation. Protection to community designs does not extend to “must fit” or “must match” products, usually found in the market for spare parts to inter alia automobiles. Under Danish law, “must match” designs are recognised as protectable subject matter, but to a somewhat limited extent.

 

Design protection may be obtained by application for registration either to the DKPTO or OHIM.

 

The protection period for both registered Danish designs and Community Designs is 5 years, but the registration is renewable for a period of up to 25 years. The duration for “must match” registered designs pursuant to the Danish Designs Act is 15 years.

 

The EC Regulation also protects unregistered designs when they have been brought into commercial circulation within the EC. The unregistered Community design is intended for short-lived products, such as fashion clothing. The protection period is 3 years from publication and is non-renewable. The protection is only valid against almost exact duplication.

The Danish Patents Act is mainly based on the 1970 Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC) to which Denmark is a state party.

 

Patents may be obtained for all inventions that are susceptible of industrial application, which possess novelty, and which involve an inventive step. It must also be possible to describe and reproduce the invention. The Danish Patents Act explicitly excludes certain subject matters from protection, e.g. discoveries, scientific theories and, of particular importance, computer programmes as such – in conformity with the EPC and practice from the European Patent Office (EPO).

 

There are three different ways of applying for the grant of a patent in Denmark: 1) by submission of a purely national application to the Danish Patent and Trademark Office, 2) through designation of Denmark in a PCT-application or 3) by a European application to EPO. Regardless of which authority has granted the patent, the patent achieves material right in the Danish territory. The choice between the three approaches to patent application depends largely on the number of countries where patent protection is necessary balanced with the registration fees and other costs.

 

The protection period is 20 years from the date of the original application, conditioned on the payment of annual fees to maintain the patent.

The protection for utility models is found in the Danish Utility Models Act, which is modelled on similar German legislation. Any creation which is susceptible to industrial application or which provides a solution to a technical problem may on application be registered as a utility model, but the Act requires that it possesses novelty and differs distinctly from prior art. Unlike patents there is no requirement of an inventive step as for utility models.

 

The utility model protection may be obtained by registration at the DKPTO. The application must include a statement subject matter of the desired utility model. The applicant may request that the DKPTO also ensures that the requirements of novelty and distinction from prior art are fulfilled; the request carries an additional fee.

 

The Utility Models Act supplements the Patents Act, but the conditions for obtaining protection of utility models are more lax than the conditions for obtaining a patent. An application for utility model protection can constitute priority for an application for a patent and vice versa. Furthermore obtaining utility model protection is a speedier process in general than obtaining a patent, and a utility model can therefore be obtained supplementary to a patent, being in force while the patent application is processed by the DKPTO.

 

The protection period is three years from the date of the application, but the registration is renewable for two more periods of three and four years respectively.

Furthermore, the standard of good marketing practise can be pleaded as a protection against unauthorised dissemination of business know-how in general. Know-how is acknowledged under Danish law, but is not directly protected by any legislation. However, the Marketing Practises Act protects against unauthorised dissemination of trade secrets and technical drawings etc. Dissemination of trade secrets will in all likelihood be an issue in court proceedings in the future, since some companies opt for the protection found in trade secrets as an alternative to registered rights, which are often somewhat short-lived, such as for instance patents.

 

As a general rule, IP rights may be assigned in whole or in part by agreement.

 

Under the Copyright Act, the copyright originates with the person who created the work. Lacking explicit agreement between the employer and the employee, case law provides as a general rule that the copyright in a work created as a part of an employment is transferred to the employer. However, this transfer only applies to the extent that is necessary for the purpose of the ordinary business of the employer.

 

As for the copyright in computer programmes, the Copyright Act provides that the copyright in its entirety is transferred to the employer when the programme has been created by an employee in the execution of his duties or following the instructions given by the employer.

 

Designs are often created as a part of an employment but the Danish Designs Act does not govern the question of ownership of registered design rights created by an employee as part of his work. As for registered and unregistered EC designs, the EC Regulation provides that the right to the designs passes on to the employer unless otherwise agreed.

The Danish Administration of Justice Act provides for effective and relatively fast means of enforcement of IP rights, including the rights mentioned above - trademarks, copyrights, designs, patents, and ulitty models. It is also possible to base an enforcement action on rights and obligations found in the Marketing Pratices Act; of particular interest in this respect are trade secrets. The procedures mentioned below apply to enforcement action in the civil courts. In circumstances of egregious intellectual property right infringements, it is possible to prosecute such infrigements in the criminal justice system.

 

The Enforcement Courts can issue interlocutory injunctions against infringements of IP rights. An infringer is enjoined from further infringement under criminal liability and the right holder can obtain assistance from the Enforcement Court to prevent further infringements. Right holders can also initiate proceedings to preserve evidence of suspected infringement and the scope of such infringement. An order to preserve evidence can include a search of the business premises of the alleged infringer. In order to obtain an injunction or an order to preserve evidence, the right holder must successfully establish a likelihood of infringing activity and that the evidence can be found at the requested place of a search.

 

An injunction and motion to preserve evidence can be conducted simultaneously. Additionally, the procedures can, in instances where the Enforcement Court is satisfied that there is risk that the evidence is destroyed, be carried out without prior notification to the alleged infringer. The infringer does, however, have a right to legal counsel.

 

Orders by the Enforcement Court of injunctive relief or preservation of evidence can be appealed to the High Courts. A right holder that succeeds in obtaining these preliminary measures is required to file a lawsuit on the merits within a rather short timeframe, unless the infringer waives the right to confirmatory action. During the proceedings on the merits, the right holder can claim remuneration and damages, a permanent injunction, destruction of infringing material, and in instances of egregious infringements, the infringer can be held criminally liable.

 

Furthermore, the Administration of Justice Act contains provisions allowing courts to order a defendant in an infringement case to provide necessary evidence, which is applicable in all civil cases, as well as procedures, applicable only in IP infringement cases, requiring defendants to provide information about the nature and scope of alleged infringements.

 

The Danish enforcement rules are the results of the implementations of EC directives, in particular the Enforcement Directive (2004/48/EC) and the Copyright Directive (2001/29/EC).

 

All of the abovementioned IP rights contain provisions in the respective acts, which delineate remuneration and damages for infringement to rightholders whose rights have been infringed. It should be noted, however, that it is traditionally difficult to substantiate claims for damages and by and large monetary awards by Danish courts in such cases are subject to the courts' discretion. Additionally it is possible to obtain judicial orders calling for the destruction of infringing copies, as well as publication of court decisions by the infringer.

 

LETT law firm has extensive experience with cases involving enforcement of all types of IP rights and with cases involving the above mentioned procedures.