Unregistered Trade Mark Rights in Denmark – How to Obtain Them and Why They Are So Important

Registered trade marks can be business critical to most companies. The general scope of protection provided by registered trade marks and the process around how to obtain registration is, at least to some extent, familiar to most businesses. However, obtaining and enforcing unregistered trade mark rights may be unfamiliar for most companies even though it is often the last resort for the protection of business identifiers when no registration has been made and it suddenly is too late.

It follows from Article 3(1)(iii) of the Danish Trade Marks Act that a trade mark can be obtained by the use of such trade mark “for the goods or services for which the trademark is continuously used, when the extent of the use has more than mere local significance”.

There is no specific threshold as to the intensity or duration of use, and it is not necessary to prove that the trade mark has acquired any degree of enhanced distinctiveness. In fact, provided that the trade mark is eligible for protection, an unregistered Danish trade mark right can be obtained in only one day if, for instance, a company markets its products in nationwide media and can prove that the relevant Danish public has been exposed to the trade mark used for relevant goods or services.

Once obtained, an unregistered Danish trade mark provides protection, more or less, comparable to the protection awarded by a registered Danish trade mark.

The protection of an unregistered Danish trade mark persists as long as the trade mark continues to be in use. However, temporary cessation of use will not necessarily lead to a lapse of protection. There is no fixed period of time as to when “temporary” cessation turns to a “permanent” cessation, as it will depend on the specific circumstances causing the cessation of use.

Very often, most businesses prefer to apply for registration of their trade marks, which is also by far the most optimal approach. But when by oblivion, or maybe lack of financial means, a business has failed to secure registration in Denmark or the entire EU, unregistered trade mark protection can be essential to counter infringing third-party registration of conflicting trade marks, business names or domains.

Denmark has, by far, the most relaxed requirements for obtaining unregistered trade mark rights, and in many EU jurisdictions, it is not even possible to obtain unregistered trade mark rights. This makes Denmark popular as a trade mark last resort “rescue” jurisdiction in the EU, where you might be able to prevent business critical loss of rights against a third-party’s unjustified acquisition of goodwill.

An unregistered Danish trade mark can be used to challenge EU trade mark applications or even cancel already-registered EU trade marks, provided the unregistered trade mark has commenced use prior to the application date of the EU trade mark. Further, unregistered Danish trade mark rights can be used to challenge the registration of conflicting domain registrations of later priority on some top-level domains and even form a basis for preliminary injunction proceedings, seizure of evidence proceedings and compensation and damages claims in Danish jurisdiction. Such features combined with the wide-reaching effect of the Judgement Regulation (Brussels I) in relation to seizing jurisdiction within the EU, make unregistered Danish trade mark rights a strong weapon even against advertising of conflicting trade marks of later priority in other EU member states.

Unregistered trade mark rights do, however, also pose a risk for many businesses. The reason for this is the difficulties in identifying unregistered trade mark rights when conducting searches for prior rights as, for obvious reasons, the unregistered trade marks do not show in registers or databases. It has, for many European businesses, been an unpleasant surprise to experience that in Denmark, conflicting similar, or even identical trade mark rights of earlier priority exist. Prior rights searches can be conducted also for unregistered rights, but they require more thorough investigations in the Danish jurisdiction.

Unregistered Danish trade marks are easy to obtain – nowhere can unregistered trade mark rights be obtained as easily as in Denmark – and can be valuable assets for businesses without registered trade mark rights which want to challenge EU trade mark applications, domains and business names of later priority not only in Denmark but also in other EU member states, provided jurisdiction – eg, advertising, can be seized in Denmark. Unregistered trade mark rights can however, self-evidently, also constitute unforeseen hindrances for registration of trade mark rights, among other things, and careful attention must be paid to these, as well as to applications for EU trade marks.