Newsletter November and december 2022
Trademark LAW
The use of Google AdWords violated the Danish Trademark Act and the Danish Marketing Practices Act
In a recent decision on 2 November 2022 the Danish Maritime and Commercial High Court, found one of the defendants guilty of violating the Danish Marketing Practices Act and the Danish Trademark Act by using the petitioner’s trademarks as Google AdWords. The Court found that the defendant had used the trademark in a way which enables the user only with difficulty, to ascertain whether the goods or services referred to originated from the plaintiff. The other defendant was acquitted since it was not proven that the defendant was involved in the infringement of the petitioner’s trademarks.
Both the petitioner’s and the defendants’ revocation claim regarding their trademarks were dismissed.
The judgment can be read in full in Danish here.
The Danish Eastern High Court upholds the decision on not granting a dynamic injunction against future infringements
In an appeal brought by Skechers U.S.A., Inc. II ("Skechers”) on 9 November 2022, The Danish Eastern High Court upheld the Maritime and Commercial Court’s decision on not granting preliminary injunctions against future infringements, however on other grounds than the Maritime & Commercial High Court.
Among others, the court found that it could not be excluded that the described future alleged infringements could be lawful. Accordingly, the Danish Eastern High Court found that the conditions in the Danish Administration of Justice Act, section 413, were not met.
Skechers is currently awaiting a permission to appeal to the third instance.
The Danish Eastern High Court’s decision can be read in Danish here.
New rules on submitting evidence to the EUIPO
From 1 February 2023 new rules on submitting evidence to the EUIPO will come into effect. The new rules will stipulate new requirements which will apply when submitting annexes on data carriers, such as USB flash drives, pen drives or similar memory units.
The new requirements can be read in full in the Executive Director’s Decision here.
Import of more than 50 counterfeit products not for personal use
In a decision by the Danish Maritime and Commercial High Court on 19 December 2022, the Court found that the import of more than 50 counterfeit products from Turkey was a violation of the trademark rights of, inter alia, Louis Vuitton, Chanel and Prada.
The defendant argued that the products were imported for personal use only, as gifts to his family. The defendant did not argue against the products being counterfeit.
The Court found that the import must be regarded as an import for commercial use. The Court based its decision on the number of products and the fact that a large part of the products were identical but of different sizes.
The judgement can be read in full in Danish here.
PATENT LAW
Start of the Unified Patent Court postponed due to IT issues and introduction of new transitional measures
On 5 December 2022 the UPC announced on their website that the start of the UPC will be postponed due to problems with the access of the UPC’s content management system.
The start of the Sunrise Period is postponed for two months until 1 March 2023 and so is the entry into force of the UCPA, which will be postponed until 1 June 2023.
The UPC’s announcement can be read here.
Further, the UPC have introduced two new transitional measures applicable to European patent applications having reached the final phase of the grant procedure. The new measures include the opportunity to file early requests for unitary effect and the possibility for the applicant to request a delay in issuing the decision to grant a European patent.
More information on the transitional measures can be found here.
The Danish Eastern High Court upholds decision to dismiss request for preliminary injunction
On 6 October 2022, The Danish Eastern Hight Court upheld a decision made by the Maritime and Commercial High Court in June 2022 to dismiss Novartis’s request for a preliminary in-junction against three competing companies, Glenmark, Zentiva, and Viatris, as the request was based on a pending European patent application.
The High Court ruled that Novartis lacked sufficient legal interest in the matter due to the pa-tent not being formally granted by the patent authority. With its decision, the High Court has provided a clear framework in cases of preliminary injunction on the basis of a patent applica-tion, stating that if a request for an injunction is based on a pending patent application, it will not constitute sufficient and current legal interest.
BUGGE VALENTIN represented Glenmark and Zentiva in the case.
Our full article on the matter can be read on Kluwer Patent Blog here. The decision can be read in Danish here.
COPYRIGHT law and Marketing practice law
The Maritime and Commercial High Court ruled against preliminary injunction
On 14 November 2022 the Maritime and Commercial High Court found that the sale and marketing of an outdoor gas lantern was not a violation of the Marketing Practices Act or the Copyright Act.
The case seems to suggest a strict approach for the application of IP protection for applied art. The ruling has been appealed by the plaintiff to the Eastern High Court.
The Maritime and Commercial High Court’s decision can be read in Danish here.
Press releases as hidden advertisement
In a statement made by the Consumer Ombudsman on 3 November 2022, the Ombudsman has enjoined upon a Danish PR company the prohibition against hidden advertisement.
The PR agency assists companies with marketing by preparing press releases with a clear commercial intent, which are then sent to editorial media. The Ombudsman stated that, depending on the way in which the press releases are brought by the editorial media, the PR agency could be violating the prohibition against hidden advertisement, if the commercial intent is not clearly stated.
Read more on the Consumer Ombudsman’s website here.
The Danish Ethical Committee for the Pharmaceutical Industry has published a new set of guidelines regarding the use of digital media in marketing activities
In November 2022 the Danish Ethical Committee for the Pharmaceutical Industry published a new set of guidelines targeting the pharmaceutical industry’s use of digital media in marketing activities.
The guidelines can be used as a toolset when accessing the possibilities of using apps, social media, influencers etc. for marketing pharmaceutical products. The guidelines also include a checklist - in exhibit A - to make sure that digital marketing is compliant with Danish law.
Read the guidelines in Danish here.
Greenwashing and documentation requirements
In a statement made by the Consumer Ombudsman on 16 December 2022, the Ombudsman has enjoined upon five Danish companies the rules against the marketing of products as sustainable.
The Ombudsman found that the advertisement by five Danish companies, including Føtex/Salling Group, had been in violation of the Danish Marketing Practices Act.
The companies had marketed their products as ‘sustainable’ and ‘environmentally friendly’ without being able to document, inter alia, that the production did not cause harm to the planet’s resources.
The statement can be read in full in Danish here.