Published by Global Legal Group, with contributions from:

Beuchat, Barros & PfennigerBoga & AssociatesBolet & TerreroCamilleri PreziosiDANIEL AdvogadosEllis & Co.ELZABURUFross Zelnick Lehrman & Zissu, P.C.Gorodissky & Partners (Ukraine)GRATA International Hamdan AlShamsi Lawyers & Legal ConsultantsInternational Trademark Association (INTA)Jackson Etti & EduJones DayKoushos Korfiotis Papacharalambous L.L.C.Law Offices of Patrinos & KilimirisLee International IP & Law GroupLegaltreeLendvai PartnersLLC “Card Patent”Locke Lord LLPLubberger Lehment

Miller Thomson LLPNomeniusOLIVARESPATENTNA PISARNA D.O.O.Patice IP LegalPham & AssociatesPopovic Popovic & PartnersQuevedo & PonceRopes & Gray LLPSchwärzler Attorneys at LawShobayashi International Patent & Trademark OfficeSimba & Simba AdvocatesSołtysiński Kawecki & SzlęzakSubramaniam & Associates SyCip Salazar Hernandez & Gatmaitan Law OfficesSynchTay & PartnersTIPLO Attorneys-at-Law (also Taiwan International Patent & Law Office)Wilkinson & GristWrays

ICLGThe International Comparative Legal Guide to:

A practical cross-border insight into trade mark work5th Edition

Trade Marks 2016

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DisclaimerThis publication is for general information purposes only. It does not purport to provide comprehensive full legal or other advice.Global Legal Group Ltd. and the contributors accept no responsibility for losses that may arise from reliance upon information contained in this publication.This publication is intended to give an indication of legal issues upon which you may need advice. Full legal advice should be taken from a qualified professional when dealing with specific situations.

Continued Overleaf

4 Albania Boga & Associates: Renata Leka & Armando Bode 13

5 Australia Wrays: Tim Francis 21

6 Bolivia Bolet & Terrero: Juan Ignacio Zapata 29

7 Brazil DANIEL Advogados: Robert Daniel-Shores & Roberta Arantes 38

8 Canada Miller Thomson LLP: Catherine M. Dennis Brooks 49

9 Chile Beuchat, Barros & Pfenniger: Andrés Melossi 57

10 Cyprus Koushos Korfiotis Papacharalambous L.L.C.: Eleni Papacharalambous & Eleni Korfiotis 64

11 Ecuador Quevedo & Ponce: Alejandro Ponce Martínez & Roque Albuja Izurieta 73

12 France Jones Day: Emmanuel G. Baud & Philippe Marchiset 79

13 Germany Lubberger Lehment: Dr. Ulrich Hildebrandt & Anja Wulff 90

14 Greece Law Offices of Patrinos & Kilimiris: Maria Kilimiris & Manolis Metaxakis 98

15 Hong Kong Wilkinson & Grist: Andrea Fong & Annie Tsoi 106

16 Hungary Lendvai Partners: András Lendvai 114

17 Iceland Patice IP Legal: Ólafur Ragnarsson 121

18 India Subramaniam & Associates: Hari Subramaniam & Aditi Subramaniam 129

19 Japan Shobayashi International Patent & Trademark Office: Masayuki Shobayashi & Yukihiro Higashitani 138

20 Kazakhstan GRATA International: Aizhan Mukhammad & Timur Berekmoinov 146

21 Kenya Simba & Simba Advocates: Benard Murunga & Perpetua N. Mwangi 156

22 Korea Lee International IP & Law Group: Mi-Cheong Lee & Robert M. Kim 163

23 Kosovo Boga & Associates: Renata Leka & Armando Bode 170

24 Liechtenstein Schwärzler Attorneys at Law: Dr. Alexander Amann, LL.M. 178

25 Malaysia Tay & Partners: Lin Li Lee & Kah Yee Chong 185

26 Malta Camilleri Preziosi: Henri Mizzi & Sharon Xuereb 196

27 Mexico OLIVARES: Alonso Camargo & Daniel Sánchez 204

28 Netherlands Legaltree: Olav Schmutzer & Marjolein Driessen 212

29 Nigeria Jackson Etti & Edu: Toyosi Odunmbaku & Busola Bakinson 221

30 Philippines SyCip Salazar Hernandez & Gatmaitan Law Offices: Vida M. Panganiban-Alindogan & Enrique T. Manuel 230

31 Poland Sołtysiński Kawecki & Szlęzak: Dr. Ewa Skrzydlo-Tefelska & Karol Gajek 240

32 Romania Nomenius: Elena Grecu & Bogdan Bularda 248

33 Russia LLC “Card Patent”: Olga Krivelskaya & Svetlana Obida 256

34 Serbia Popovic Popovic & Partners: Katarina Kostic 264

35 Slovenia PATENTNA PISARNA D.O.O.: Irena Kadunc & Vesna Kovič 271

36 Spain ELZABURU: Fernando Ilardia & Luis Baz 279

37 Sweden Synch: David Leffler & Elisabeth Sundberg 290

38 Taiwan TIPLO Attorneys-at-Law (also Taiwan International Patent & Law Office): J. K. Lin & H. G. Chen 298

Country Question and Answer Chapters:

1 INTA Expands its Scope for Brand Owners and Consumers – Ronald van Tuijl, International Trademark Association (INTA) 1

2 Global Trade Mark Transformation 2016 – John Olsen & Charlie Clarence-Smith, Locke Lord LLP 4

3 From Disparagement to Fame and Other Key Developments in U.S. Trademark Law – Karen Lim & Jason D. Jones, Fross Zelnick Lehrman & Zissu, P.C. 8

General Chapters:

Contributing EditorJohn Olsen, Locke Lord LLP

Sales DirectorFlorjan Osmani

Account DirectorsOliver Smith, Rory Smith

Sales Support ManagerToni Hayward

EditorCaroline Collingwood

Senior EditorRachel Williams

Chief Operating Officer Dror Levy

Group Consulting EditorAlan Falach

Group PublisherRichard Firth

Published byGlobal Legal Group Ltd.59 Tanner StreetLondon SE1 3PL, UKTel: +44 20 7367 0720Fax: +44 20 7407 5255Email: info@glgroup.co.ukURL: www.glgroup.co.uk

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Copyright © 2016Global Legal Group Ltd.All rights reservedNo photocopying

ISBN 978-1-910083-92-5ISSN 2049-3118

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Country Question and Answer Chapters:

The International Comparative Legal Guide to: Trade Marks 2016

39 Ukraine Gorodissky & Partners (Ukraine): Nina Moshynska 309

40 United Arab Emirates Hamdan AlShamsi Lawyers & Legal Consultants: Dr. Ghandy AbuHawash 320

41 United Kingdom Locke Lord LLP: John Olsen & Charlie Clarence-Smith 327

42 USA Ropes & Gray LLP: Peter M. Brody & Emilia F. Cannella 338

43 Vietnam Pham & Associates: Pham Vu Khanh Toan 346

44 Zambia Ellis & Co.: Bonaventure Chibamba Mutale, S.C. 355

EDITORIAL

Welcome to the fifth edition of The International Comparative Legal Guide to: Trade Marks.This guide provides corporate counsel and international practitioners with a comprehensive worldwide legal analysis of trade mark laws and regulations.It is divided into two main sections:Three general chapters. These are designed to provide readers with a comprehensive overview of key issues affecting trade mark laws and regulations, particularly from an EU and US perspective.Country question and answer chapters. These provide a broad overview of common issues in trade mark laws and regulations in 41 jurisdictions.All chapters are written by leading trade mark lawyers and industry specialists and we are extremely grateful for their excellent contributions.Special thanks are reserved for the contributing editor John Olsen of Locke Lord LLP for his invaluable assistance.Global Legal Group hopes that you find this guide practical and interesting.The International Comparative Legal Guide series is also available online at www.iclg.co.uk.

Alan Falach LL.M. Group Consulting Editor Global Legal Group Alan.Falach@glgroup.co.uk

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Chapter 37

Synch

David Leffler

Elisabeth Sundberg

Sweden

be paid. The PRV assesses the formal and substantial requirements. Should any ground for refusal be found, the applicant will be enabled to submit arguments. If no ground for refusal is found, PRV registers and publishes the trade mark. An opposition period of three months follows. If an application is refused only in part, the application will be registered for the remaining goods and/or services.

2.5 How can a trade mark be adequately graphically represented?

A trade mark must have a representation that is clear, precise, self-contained, easily accessible, intelligible, durable and objective to fulfil the criteria of graphical representation. If the mark applied for contains certain colour(s), the colour(s) must be specified in the application. The marks will be registered and obtain protection in the way they are represented. However, in relation to black and white figurative marks, all colours will be considered covered by such a registration.

2.6 How are goods and services described?

Goods and services are classified through the Nice Classification system. The goods and services must be described as accurately and precisely as possible. Unclear or inaccurate terms are not accepted. In relation to class headings PRV applies the “what you see is what you get” approach. In addition, the common communication of the European TMDN applies to particular questions of trade mark classification.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

Sweden is the only territory covered.

2.8 Who can own a trade mark in your jurisdiction?

Any natural person or legal entity.

2.9 Can a trade mark acquire distinctive character through use?

Yes, it can.

1 Relevant Authorities and Legislation

1.1 What is the relevant trade mark authority in your jurisdiction?

The Swedish Patent and Registration Office (PRV) is the relevant trade mark authority.

1.2 What is the relevant trade mark legislation in your jurisdiction?

The Swedish Trade Marks Act (2010:1877) is the relevant trade mark legislation.

2 Application for a Trade Mark

2.1 What can be registered as a trade mark?

Any sign capable of being represented graphically may be registered as a trade mark, such as words (including personal names), figurative elements, letters, numerals, and the shape of goods or of their packaging.

2.2 What cannot be registered as a trade mark?

Signs that are not capable of being represented graphically may not be registered as trade marks, for instance scents. Moreover, signs that fall under the absolute (see question 3.1) or relative (see question 4.1) grounds for refusal will not be eligible for trade mark registration and therefore will be rejected by the PRV ex officio.

2.3 What information is needed to register a trade mark?

The application must contain: i) the applicant’s name or business name and address; ii) information and name of the legal representative; iii) a clear reproduction of the trade mark; and iv) a list of goods or services covered by the trade mark and indication to which classes they belong. Colour(s) shall also be indicated on the application.

2.4 What is the general procedure for trade mark registration?

A written application is submitted to PRV and the fees are required to

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iii) includes, without permission, such a State or international emblem or such a municipal coat of arms which, under law or regulations, may not be used unauthorised as a trade mark, or something that can easily be confused with such an emblem or such a municipal coat of arms.

Finally, a trade mark shall neither be registered, if it contains or consists of any sign which is liable to be conceived as a geographical indication for wines or spirits and relates to wines or spirits of a different origin.

3.2 What are the ways to overcome an absolute grounds objection?

The applicant has to successfully argue and/or provide evidence to the PRV on the lack of any breach of the pertaining provisions or demonstrate that the mark has acquired distinctiveness through use.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A party receiving an adverse decision from the PRV concerning the registration of a mark has the right to lodge an appeal against the decision.

3.4 What is the route of appeal?

All decisions of the PRV can be appealed to the Court of Patent Appeals (PBR) within two months from the date of the decision. PBR’s decision can be appealed to the Supreme Administrative Court if a leave of appeal is granted. From September 1, 2016, a specialised IP court, the Patent and Market Court (PMD), will replace the PBR and the district courts in relation to trade mark matters. Decisions of the PMD will be appealed to the Patent and Market Appeal Court (PMÖD). The decision of the PMÖD can only be appealed to the Swedish Supreme Court if PMÖD grants a right to appeal and leave of appeal is granted by the Swedish Supreme Court.

4 Relative Grounds for Refusal

4.1 What are the relative grounds for refusal of registration?

A trade mark shall not be registered without the consent of the relevant proprietor of an earlier trade symbol, if it:1. is identical with an earlier trade symbol for identical goods or

services;2. is identical with or similar to an earlier trade symbol

for identical or similar goods or services, if there exists a likelihood of confusion, including the likelihood of association between the user of the trade mark and the proprietor of the trade symbol as a result of the trade mark use;

3. is identical with or similar to an earlier trade symbol which is known by a significant part of the relevant public, and the use of the trade mark would take unfair advantage of or without due cause be detrimental to the distinctive character or repute of the trade symbol; or

4. can be confused with a symbol which, at the time of the application, was being used by a third party in this country or abroad and is still in use, if the applicant was acting in bad faith at the time of the application.

2.10 How long on average does registration take?

Approximately 2.5 months.

2.11 What is the average cost of obtaining a trade mark in your jurisdiction?

Applications filed online cost SEK 1,800. Other applications cost SEK 2,300. This fee covers one class and each additional class costs SEK 900. A supplementary fee of SEK 500 is further charged for applications containing goods or services not selected through the list of pre-validated terms offered by PRV.

2.12 Is there more than one route to obtaining a registration in your jurisdiction?

Protection can either be obtained by a national registration, or through an international registration via the Madrid Protocol designating Sweden. The European Union trade mark also confers protection in Sweden.

2.13 Is a Power of Attorney needed?

No, it is not.

2.14 If so, does a Power of Attorney require notarisation and/or legalisation?

If an application is accompanied by a power of attorney, it must be submitted in original form.

2.15 How is priority claimed?

By stating it on the application form and providing information regarding who made the earlier application, where and when it was filed together with the earlier application number.

2.16 Does your jurisdiction recognise Collective or Certification marks?

Yes, it does.

3 Absolute Grounds for Refusal

3.1 What are the absolute grounds for refusal of registration?

A trade mark must be capable of distinguishing the goods or services concerned in order to be registered. Furthermore, signs which consist exclusively of a shape which results from the nature of the goods, a shape that is necessary in order to obtain a technical result or a shape which gives substantial value to the goods cannot be covered by exclusive rights.In addition, a mark shall not be registered, if it: i) is contrary to law or regulations or to principles of morality or

public policy; ii) is of such a nature as to deceive the public concerning the

nature, quality, geographical origin or any other circumstance related to the goods or services; or

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parties normally follow. On the basis of the arguments and evidence submitted by the parties, PRV will either reject the opposition or cancel the contested registration in its entirety or in part.

6 Registration

6.1 What happens when a trade mark is granted registration?

The registration is published and a certificate is issued to the holder. A three-month opposition period then follows (see question 5.3 above).

6.2 From which date following application do an applicant’s trade mark rights commence?

An applicant’s trade mark rights commence from the date of application provided that the trade mark is registered.

6.3 What is the term of a trade mark?

A trade mark registration is valid for 10 years from the date of registration. It can be renewed for subsequent 10-year periods.

6.4 How is a trade mark renewed?

A trade mark can be renewed either by filing an application for renewal or by paying the renewal fee. This can be done online through one of PRV’s e-services. Renewal is only possible at the earliest one year preceding the expiry of the protection but must be made no later than six months following the expiry. For renewals filed within the six-month period following expiry, a surcharge must be paid before the expiry of the six months. The decision of the PRV concerning the renewal is entered in the registry and published.

7 Registrable Transactions

7.1 Can an individual register the assignment of a trade mark?

Yes, by submitting an application to the PRV.

7.2 Are there different types of assignment?

Yes, a trade mark may be assigned in full or partially for certain goods or services. However, a registered trade mark should first be divided in order that such partial assignment is able to be recorded in the trade mark register.

7.3 Can an individual register the licensing of a trade mark?

Yes, by submitting an application to PRV and the licence agreement in original or as a certified copy.

7.4 Are there different types of licence?

Yes exclusive and non-exclusive.

Relevant trade symbols are Swedish trade marks, international registrations protected in Sweden and EU trade marks. Points 1–3 above further apply to protected trade names. In relation to unregistered trade names, such trade names are only relevant if the protection applies within a substantial part of Sweden.In addition to the above, a trade mark shall not be registered, if it contains or consists of: 1. an element which is liable to be conceived as another party’s

trade name; 2. an element which is liable to be conceived as another

person’s characteristic surname, generally known artistic name or similar name, if the use of the trade mark would be to the disadvantage of the bearer of the name, and if the name obviously does not relate to a person who is long deceased;

3. a picture of another person that obviously does not relate to a person who is long deceased; or

4. an element which infringes another party’s copyright in a literary or artistic work or another party’s rights in a photographic picture or in a design.

4.2 Are there ways to overcome a relative grounds objection?

Furnish evidence for the PRV that no conflict exists with any prior rights, by limiting the list of goods and services so that no conflict exists, or by providing consent from the proprietor of the earlier right.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

All refusals can be appealed.

4.4 What is the route of appeal?

A party receiving an adverse decision from the PRV concerning the registration of a mark has the right to lodge an appeal against the decision.

5 Opposition

5.1 On what grounds can a trade mark be opposed?

An opposition can be based on both absolute and relative grounds.

5.2 Who can oppose the registration of a trade mark in your jurisdiction?

Anyone can file an opposition based on absolute or relative grounds. However, in relation to relative grounds, if the holder of the contested registration so requests, the opponent must show a legitimate interest in respect of the opposition.

5.3 What is the procedure for opposition?

Oppositions are post-registration procedures. Oppositions must be filed within three months from the publication of the contested mark. The holder of the contested mark is then invited to file a statement addressing the opposition. Further exchanges between the

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The prerequisite for the administrative cancellation is that the holder of the contested trade mark does not contest the application for administrative cancellation. If the proprietor in due time contests the application, wholly or in part, the PRV shall inform the applicant accordingly. If the applicant wishes to maintain the claim, he or she may request that the matter or, if the contestation concerns only a part of the claim, the matter in the contested part, be transferred to a district court. If the proprietor has failed to contest in due time, the PRV shall cancel the registration in accordance with the application. If the proprietor has contested only a part of the application, the Office shall cancel the registration in the uncontested part.

8.3 Who can commence revocation proceedings?

Anyone may bring an action for cancellation or apply for administrative cancellation, except for invalidation based on relative grounds. In relation to actions based on relative grounds, a legitimate interest of that party must be shown.

8.4 What grounds of defence can be raised to a revocation action?

By presenting evidence that no ground for cancellation exists, for instance by proving that the trade mark has been put to genuine use on the Swedish market or has acquired distinctiveness. Note that use that is commenced or resumed after the expiry of the five-year period and within three months preceding the filing of the application for cancellation shall, however, be disregarded, if the preparations for the commencement or resumption occurred only after the proprietor became aware that the application for cancellation might be filed.

8.5 What is the route of appeal from a decision of revocation?

Appealable decisions in matters concerning administrative cancellation of a trade mark registration are appealed to the district court, within three weeks from the date of the decision. The appeal is submitted to the PRV. If the action is first brought to the district court as first instance the decision can be appealed to the court of appeal, provided that a leave of appeal is granted. Regarding the route of appeal after September 1, 2016, please see question 3.4.

9 Invalidity

9.1 What are the grounds for invalidity of a trade mark?

Please see the answer to question 8.1.

9.2 What is the procedure for invalidation of a trade mark?

Please see the answer to question 8.2.

9.3 Who can commence invalidation proceedings?

Please see the answer to question 8.3.

7.5 Can a trade mark licensee sue for infringement?

Yes. Upon a petition by a party that owns a trade symbol or by a party that, on the basis of a licence, has the right to exploit a trade symbol, the court may issue an injunction prohibiting, on penalty of a fine, a party that commits, or contributes to, a trade mark violation to continue that act.

7.6 Are quality control clauses necessary in a licence?

No, they are not.

7.7 Can an individual register a security interest under a trade mark?

Yes, a registered trade mark or an application for registration of a trade mark may be pledged. A right of pledge in a registered trade mark or an application for registration of a trade mark emerges through registration of a written contract of pledge concerning the property.

7.8 Are there different types of security interest?

No, there are not.

8 Revocation

8.1 What are the grounds for revocation of a trade mark?

The Swedish Trade Marks Act does not differentiate between revocations or invalidations. As such, a trade mark registration shall be cancelled in its entirety or in part if: 1. the mark has been registered in violation of the Swedish

Trade Marks Act; 2. the registration is still in violation of the Swedish Trade

Marks Act; and 3. the rights in the mark may not persist anyhow following

acquiescence.In addition, a registration may also be revoked, if: 1. the trade mark, in consequence of acts or inactivity of the

proprietor, has become a common name in the trade for goods or services in respect of which it has been registered;

2. the trade mark has come to conflict with law or regulations or principles of morality or public policy; or

3. the trade mark, in consequence of the use made of it by the proprietor or with the proprietor’s consent in respect of the goods or services for which it is registered, has become liable to deceive the public concerning the nature, quality, geographical origin or any other circumstance related to the goods or services.

Furthermore, a trade mark registration may be cancelled, if the proprietor has not, within five years from the final decision on the registration matter, or within a consecutive period of five years, made genuine use of the mark in Sweden in respect of the goods or services for which it has been registered and the proprietor does not have proper reasons for the non-use.

8.2 What is the procedure for revocation of a trade mark?

Anyone who wants to initiate proceedings for cancellation based on the above-mentioned grounds may bring an action to the court or apply for an administrative cancellation to the PRV.

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10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

Yes. If an applicant shows probable cause that someone has committed a trade mark infringement, the court may order, on penalty of a fine, that the infringing party or a party contributing or benefiting from the infringement, shall provide information to the applicant concerning the origin and distribution networks in relation to the goods or services in respect of which the infringement has been committed (an ‘order to provide information’). Anyone who has been ordered to provide information following such an order, has a right to a reasonable compensation for the costs and inconvenience caused. The compensation shall be paid by the party that has applied for the order to provide information.In addition, if it can reasonably be assumed that someone has committed, or contributed to, an infringement, the court may, for the purpose of preserving evidence relating to the infringement, order that an investigation be undertaken in respect of that party in order to search for objects or documents that can be assumed to be of importance for the inquiry into the infringement (an ‘infringement investigation’). An order for an infringement investigation may be rendered only where the applicant posts a security at the court for the damage which may be caused to the opposite party. Where the applicant is not able to post such a security, the Court may liberate the applicant from it.

10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

An important principle under Swedish civil procedural law is that all arguments and evidence shall be presented at the main hearing. However, it is generally acceptable to make oral reference to previously filed written statements or evidence. Witnesses are questioned during the oral hearing and cross-examination is possible.

10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

Yes. This is within the discretion of the court.

10.7 After what period is a claim for trade mark infringement time-barred?

A claim for trade mark infringement is not time-barred per se. However, a right for compensation for damages is statute-barred, if the action is not brought to court within five years from the time when the damage was caused.

10.8 Are there criminal liabilities for trade mark infringement?

Yes, infringements committed intentionally or by gross negligence are subject to punishment by fines or imprisonment for not more than two years.

10.9 If so, who can pursue a criminal prosecution?

The public prosecutor may bring an act of prosecution only if the injured party calls for a prosecution of the offence and prosecution is, for specific reasons, called for in the public interest.

9.4 What grounds of defence can be raised to an invalidation action?

Please see the answer to question 8.4.

9.5 What is the route of appeal from a decision of invalidity?

Please see the answer to question 8.5.

10 Trade Mark Enforcement

10.1 How and before what tribunals can a trade mark be enforced against an infringer?

By filing an application for a summons to a district court. However, please note that from September 1, 2016 the Patent and Market Court will be the first instance for infringement cases (see the answer to question 3.4).

10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

The pre-trial procedural stages consist of: i) application for a summons; ii) the court issues a writ of summons; iii) the defendant hands in a statement of defence; iv) further submissions by the parties; v) a preparatory meeting at the district court with a judge where the parties may respond to each other’s statements and the court may ask questions so that the parties positions are clear and complete; vi) further submissions by the parties, adding evidence and arguments; and vii) trial.It takes approximately six months for proceedings to reach trial from commencement.

10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?

(i) Yes. If the plaintiff shows a probable cause that an act implying a trade mark infringement, or a contribution to an infringement, is taking place and if it can reasonably be expected that the defendant, through the continuation of that act, or the contribution thereto, diminishes the value of the exclusive right in the trade symbol, the court may render an injunction, on penalty of a fine, for the time until the case has been finally adjudicated or otherwise is decided. Before the injunction is rendered, the defendant shall be given an opportunity to respond, unless a delay would entail a risk for damage. However, such a preliminary injunction may, as a general rule, be rendered only if the plaintiff deposits a security with the Court for the damage that may be caused to the defendant.

(ii) The court may issue an injunction prohibiting, on penalty of a fine, a party that commits, or contributes to, a trade mark violation to continue that act. Similarly, if the court has issued a preliminary injunction, the Court shall, when the case is adjudicated, decide whether such an injunction shall continue to apply.

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accuracy of the first instance decision without granting leave to appeal, or (iii) the case has precedential value. If leave to appeal is granted, the case will be heard again in full.

13.2 In what circumstances can new evidence be added at the appeal stage?

New evidence, in principle, cannot be added in the course of an appeal proceeding. However, in special cases, new evidence may be added based on certain circumstances, for instance, if the evidence did not exist or in case it was not available during the first instance proceedings.

14 Border Control Measures

14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?

The EU Regulation concerning customs enforcement of intellectual property rights (No 608/2013) applies in Sweden.According to the EU Regulation, a rights holder can file an application for action to the customs authorities. When the customs authorities identify goods suspected of infringing an intellectual property right, covered by an application for action, they shall suspend the release of the goods or detain them. The suspected infringer and the right holder are then informed within one working day. Unless the parties agree to the destruction of the infringing goods, the rights holder must initiate court proceedings within 10 working days to determine whether an intellectual property right has been infringed (or, in the case of perishable goods, three non-extendable working days). This deadline is extendable by an additional 10 working days. If no information on initiated court proceedings is made, the customs authorities will grant the release of the goods or put an end to their detention.

15 Other Related Rights

15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?

Unregistered rights are fully enforceable if they are established through use. A sign is deemed to be established on the Swedish market if a certain level of recognition is existent with respect to a significant part of the relevant public as an indication of source regarding the covered products or services. Should a sign be partially established on the Swedish market, such unregistered trade mark will confer geographically limited exclusive rights.

15.2 To what extent does a company name offer protection from use by a third party?

Company names are protected under the Trade Names Act (1974:156). Trade names are protected either through registration at the Swedish Companies Registration Office or an unregistered trade name if it through use has become established on the market (in a substantial part of Sweden or in a local part). Protection for trade names is similar to that of trade marks, i.e. protection against identical trade symbols, confusingly similar trade symbols or, if the trade name is reputed, trade symbols that are identical or similar, and the use takes unfair advantage of, or without due cause is detrimental to the trade name’s distinctive character or repute.

10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?

Unauthorised threats of trade mark infringement can be considered unfair marketing practices under the Marketing Act (2008:486).

11 Defences to Infringement

11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

Based on the facts of the case, a defence could be that the alleged infringing use was not conducted in the course of trade, that the use has not adversely affected any function of the trade mark (in cases with double identity situations) or that no likelihood of confusion exists between the marks.

11.2 What grounds of defence can be raised in addition to non-infringement?

Counterclaim of invalidity (cancellation), exhaustion of rights, acquiescence, revocation due to non-use or degeneration, lack of legal interest to bring action, that the mark is used in accordance with good business practice for a firm name, name or address or only provides information regarding the nature of the products or services, their quality, quantity, intended purpose, value, geographical origin or other characteristics or time indications when the goods or services were produced, or that the mark needs to be used to specify the goods or services intended purpose.

12 Relief

12.1 What remedies are available for trade mark infringement?

Compensation (damages), preliminary and final injunctions. Furthermore, the court can order the recall of infringing products from the channels of commerce, to order to alter or destroy such goods or to seize the infringing goods in cases of criminal offences. The court may also order the party that has committed, or contributed to, the infringement to pay pecuniary compensation for appropriate measures to disseminate information about the judgment in the case.

12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?

The losing party is obliged to compensate reasonable legal costs of the prevailing party.

13 Appeal

13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?

A leave to appeal is needed before the appeal court hears the case. Leave to appeal is granted if (i) there is reason to doubt the accuracy of the first instance decision, (ii) it is not possible to assess the

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The Market Court, case MD 2015:16 (SpecSavers v. Lenslogistics AB). It was held that the use of an EU trade mark as a meta and title tag by a third party within the code of the third party’s website (rendering search results in online search engines) constituted unfair marketing practices. Svea Court of Appeal, case T 768-14 (Swedish Match v. V2 Distribution Sverige AB and V2 Tobacco A/S). Swedish Match’s 3D trade mark of the shape of a snuff box was held valid due to acquired distinctiveness. V2 Tobaccos’s use of a confusingly similar snuff box was therefore considered an infringement of Swedish Match’s trade mark. The decision is an example for the standards of furnishing evidence on acquired distinctiveness by means of market surveys. The case is currently pending appeal to the Swedish Supreme Court.

17.3 Are there any significant developments expected in the next year?

The Swedish government submitted a proposition (2015/16:123) on March 10, 2016 to the Parliament concerning proposed amendments to the Trade Marks Act to implement the amended EU trade mark regulation. The changes are proposed to come into effect on June 1, 2016. Furthermore, we are expecting amendments to the Trade Marks Act due to the implementation of the new Trade Marks Directive (EU) No 2015/2436. However, it might take some time before we see any changes as the Member States are obliged to implement the majority of the provisions of the new directive only January 14, 2019 and certain provisions even later, in 2023. The Trade Marks Directive’s provision that abolishes the requirement for graphical representation will potentially give green light for the registration of various sounds, holograms as Swedish trade marks, accordingly, perhaps even scents will be registrable, depending on the future technical possibilities of the PRV. Another legislative development is the centralisation of all IP cases to the Patent and Market Court as from September 1, 2016 (see the answer to question 3.4).

17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

We have seen a slightly different interpretation than before from PRV and PBR regarding the possibility to register trade marks consisting of geographical names.

15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?

Such titles might be protected by copyright, provided that the use thereof is related to the artistic work concerned. Characteristic surnames confer protection against any use as indicator of trade origin, if the use concerned would entail disadvantage for the bearer of such surname.

16 Domain Names

16.1 Who can own a domain name?

Any natural person or legal entity.

16.2 How is a domain name registered?

Through a registrar, which is a reseller authorised by the Internet Foundation in Sweden (IIS) for the top-level domain .se. Information regarding the steps of domain name registration is available on the website of IIS (https://www.iis.se/english/domains/).

16.3 What protection does a domain name afford per se?

Besides the right to use the domain name as an address for website or email, a domain name as such does not confer any other protection.

17 Current Developments

17.1 What have been the significant developments in relation to trade marks in the last year?

The most significant developments have taken place with respect to the legislation. Please see question 17.3.

17.2 Please list three important judgments in the trade marks and brands sphere that have issued within the last 18 months.

PBR, case No 15-019 (LAPPLANDS ELNÄT). The trade mark LAPPLANDS ELNÄT was considered not distinctive and therefore not registrable since the relevant public will mainly perceive the services as originating from the well-known Swedish province Lappland. PBR thereby confirmed its stricter approach lately taken by the court to the distinctiveness of geographical names.

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David LefflerSynchP.O. Box 3631SE-103 59 Stockholm Sweden

Tel: +46 761 761 908Email: david.leffler@synchlaw.seURL: www.synchlaw.se

Elisabeth SundbergSynchP.O. Box 3631SE-103 59 Stockholm Sweden

Tel: +46 761 761 906Email: elisabeth.sundberg@synchlaw.seURL: www.synchlaw.se

David Leffler joined Synch in 2014 after working as a Legal Advisor at the European Union Intellectual Property Office (Seconded National Expert), 2010–2014 and as a Legal Advisor/Legal Officer, at the Swedish Patent and Registrations Office, 2007–2014. David is also a CEDR Accredited Mediator and has broad experience in trademark disputes in the European Union and has e.g. represented EUIPO before the Court of Justice of the EU. In addition, he is an appreciated speaker within trademark related matters. David is a member of the Swedish Association for the Protection of Industrial Property (SFIR) and the Swedish Anti-Counterfeiting Group (SACG).

Synch assists from the very beginning in creating a complete strategy to ensure an optimal protection of the client’s intellectual property rights. Such assistance includes strategic counselling, research, clearance, registration and commercialisation. Synch’s services include all types of intellectual property, such as copyright, trademarks, patents, design, domain names, unfair competition and trade secrets. Synch further assists in the commercialisation, prosecution and enforcement of the client’s intellectual property rights. We assist clients in negotiation, drafting and review of commercial agreements and also through litigation in courts of law, national and international arbitration and alternative dispute resolutions. In addition, Synch works with preventive strategies to assist clients against, for example, counterfeiting. The firm has gained vast experience from their cases involving technology/IP reliant clients as well as clients within retail, digital business, health and life sciences. The in-depth IP and technology expertise of the firm, combined with the regulatory experience, makes the IP team well suited to assist business sectors that are heavily dependent on technology, IP and/or regulatory matters in their day-to-day operations.

Elisabeth Sundberg joined Synch in 2014. She has previously worked as a legal intern in a law firm and at an office for IP consultants. Elisabeth has a Master of Laws (LL.M.) and a Master’s in Medicine in Business Creation and Entrepreneurship in Biomedicine with a major in Intellectual Capital Management from the Sahlgrenska Academy. She is a member of the Swedish Association for the Protection of Industrial Property (SFIR) and the Swedish Anti-Counterfeiting Group (SACG).

Synch Sweden

59 Tanner Street, London SE1 3PL, United KingdomTel: +44 20 7367 0720 / Fax: +44 20 7407 5255

Email: sales@glgroup.co.uk

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