Trademark registration

A trademark registration describes the products or services for which you want your mark to be registered. Your protection and your options to respond if your trademark is infringed depends on what you registered. You therefore need to consider and plan whether you might want to use the mark for certain products or services sometime in the future.

This also applies if your company plans to have or already has a presence in markets other than Denmark. For example, you may apply for trademark registration in the EU in three different ways that supplement each other, and you may also apply internationally via WIPO (World Intellectual Property Organization). You may also file international applications directly in China, the USA and so on – without going through WIPO. The approach that is most appropriate for you depends on your company’s needs and strategy.

What can you protect as a trademark?

• Word marks: Consisting exclusively of combinations of words, letters, numerals or other typographical characters.
• Figurative marks: For example logos, i.e. trademarks not consisting of standard characters, styles or layouts. A figurative mark may be combined with words.
• Shape marks: Consisting of three-dimensional shapes which make up the characteristic feature of the product, for example the wrapping or packaging. Shape marks may also be combined with words.
• Position marks: Consisting of the specific way in which the trademark is placed on or affixed to the product.
• Pattern marks: Consisting exclusively of a set of elements that are repeated regularly and are typically used on the product itself or the packaging.
• Colour marks: Consisting exclusively of a single colour without contours or a combination of colours without contours.
• Sound marks: Consisting exclusively of a sound or a combination of sounds.
• Scent marks: Consisting of a scent.

You should also be particularly vigilant to trademark registration if your business has developed or is in the process of developing an app, as app icons can and should also be protected by trademark registration.

We often see cases where fraudsters try to freeload on the good name and reputation that others have spent years to build. If they succeed, it may have severe consequences for the targeted company. Registration entitles you to apply the ® symbol to your trademark. This is a small, yet valuable symbol that is recognised internationally. It shows the world that your company has exclusive rights to the trademark. Obviously, this exclusive right applies only to the extent that you have protected the mark, so it is crucial to think ahead in terms of how you intend to use the trademark.

A carefully planned trademark registration is an asset offering critical value in terms of retaining competitive strength and winning market share.

How much does it cost to register a trademark?

The cost of registering a trademark depends on the type of trademark in question and on how many classes of goods and/or services as well as the countries in which you wish to apply for protection.

If you apply directly with the Danish patent authorities, i.e. the Danish Patent and Trademark Office (DKPTO), the base fee to apply for an individual trademark is 2,000 Danish kroner for one class. Applying for a second class costs 200 kroner and the fee for each additional class is 600 kroner. You can find more information on the DKPTO website.

The basic fee for an individual EU trademark ranges from 850 to 1,000 euro. The fee for a second or more classes is between 50 and 150 euro. You can see the current fees on the EUIPO website.

The basic fee when applying for an international trademark under the Madrid System starts at 653 Swiss francs, and will depend on what you are applying for specifically. You can see the current fees on the WIPO website.

For how long is a trademark registration valid?

Once registered, a trademark applies indefinitely provided a mandatory renewal fee is paid every ten years. Some countries also require documentation at regular intervals (which vary from country to country) that a trademark is used for the registered products and/or services.

It is important to note that even in countries where documenting usage is not mandatory, the trademark authorities may – in case of a dispute – ask for documentation that your trademark is being used. If you fail to provide such documentation, you may lose your right to the trademark.

What is required to register a name, slogan or logo as a trademark?

Three fundamental requirements must be met in order to register a trademark. First of all, your trademark must be capable of distinguishing the goods and services of your business from those of other businesses. Secondly, your trademark must be capable of being reproduced in a way that makes it possible to determine the clear and precise subject matter of protection. And finally, the trademark must have a distinctive character.

But there are also marks that cannot be protected, such as words describing goods or services in an objective manner – what is referred to as ‘merely descriptive’. Indeed, it would be unfair if one company was granted an exclusive right to call its bricks ‘red’ or if another company was granted exclusivity to call its shoes ‘slip resistant’.

Also, you are not allowed to deceive the buyer by giving the impression of something specific, such as the mark NOUGAT in an application for ‘chocolate’. But if the goods are completely different, such as NOUGAT used in an application for ‘clothing’, there is no risk of deception.

Moreover, trademarks are only allowed to include a protected title, such as attorney-at-law, if you are permitted to use the title. Lastly, your trademark must not contain any official state emblems and symbols, such as a royal crown or a flag, unless you have received permission to use it.

How to apply for trademark registration

Thorough preparation for your trademark application includes a preliminary investigation. This investigation will uncover whether similar registrations have been filed in the relevant categories which may be infringed by your registration. If you have not registered a trademark for your product, you risk having to recall or rename your product. However, having a registered trademark gives you and your business partners the assurance that your investment is protected.

The trademark application must contain three things: your trademark, be it a word, logo or something completely different; a list of the categories for which you seek protection, e.g. clothing or foodstuffs. The protection only applies in the named categories. You should select your categories carefully because trademarks are subject to a requirement of use. If you just select all sorts of categories, you will be vulnerable to revocation requests. An application should therefore include the goods or services for which the mark is currently used or for which the mark is expected to be used within a period of three to five years. Finally, your application should name the person or entity owning the trademark.

Our best advice is to leave the application to an expert who knows the ins and outs of the regulatory procedures, content requirements, language, timing and the many other factors that contribute to increasing the likelihood of being granted protection. That way your application is in good hands.

How can we help you?

We offer our services for every stage of the process, from deciding on a strategy and examining the market to writing your application. We can advise you on which products and services are critical for your company’s business area and on which countries to apply in to achieve the best and most comprehensive protection.

You will get a thorough trademark application prepared by experts with many years of experience in this particular field. This increases your chances of being granted protection of the exclusive right you applied for and need.