IP and Digital Business

Our expertise

The IP & Digital Business group is particularly dedicated to a large range of disciplines arising out of and relating to intellectual property rights, technology, personal data, IT and outsourcing. We provide advice on:

• Intellectual property rights law (e.g. patents, trademarks, copyrights, designs)
• Trademark and design prosecution
• Franchises & chains operations
• Trade secrets and know-how
• Marketing practices
• Domain names
• IT & outsourcing
• Personal data.

We have extensive experience in each of these areas, and we are a broadly composed group of specialists. The group includes advisers with a traditional background as attorneys, counsels, advisers who have written PhD theses relevant to our field of expertise as well as advisers, who have experience from the Danish Patent and Trademark Office and the EUIPO. Our many specialists ensure that the group provides quick and clear advice of the highest quality at all times.

The quality of the services we provide is our most important hallmark, and we never compromise on delivering the highest quality in our work. Furthermore, we understand the importance of having a commercial approach to the assignments, and it is our goal that our work creates immediate value to our clients.

We advise on

Our experience includes assistance in relation to:

• A matter concerning the exclusive right to the name of an island
• A case concerning the right to use the trademark UfR (the Danish weekly law reports “Ugeskrift for Retsvæsen”)
• A large set of cases concerning the use of trademarks for a large Danish industrial group
• Injunction proceedings concerning infringement of designs in respect of a number of exclusive jewellery
• Matters concerning the legality of “crawling” to obtain information on the internet
• A case concerning ownership to an invention
• A case concerning infringement of a patent that included a mop cover
• Cases concerning infringement of patented components in hearing aids
• Cases concerning imitation of designer clothes.

Meet the team

Intellectual property rights law

The majority of the team in IP & Digital Business provides advice on all aspects of intellectual property rights law and a number of related matters, including in particular:

• Patents and utility models
• Trademarks and designs (see further below under the heading ”Trademarks”)
• Copyright
• Business secrets (know-how)
• Marketing law, including all aspects of marketing (both off- and online), comparative and misleading advertising and product imitation (passing-off).

In relation to intellectual property rights law, we assist clients in all types of matters, including generally advising on  intellectual property, disputes and transactional work.

A company’s rational, comprehensive and consistent handling of intellectual property rights requires that the company adopts an “IP strategy” – i.e. a strategy, which sets out how the company will respond to its own and other parties’ intellectual property rights. We have extensive experience with providing advice on and preparing IP strategies in close cooperation with our clients.

Another significant part of the group’s work relates to disputes. We prefer to commence our assistance before any disputes arise, and we work proactively to avoid disputes, e.g. already when agreements are being drafted or when handling or preparing cease and desist letters. If a dispute arises, our clients can draw on the team’s significant experience in respect of validity cases, infringement cases and other intellectual property rights law disputes. We are always working on cases involving provisional steps and preservation of evidence as well as preliminary injunction proceedings and regular legal proceedings. This experience is not only built on cases we have conducted on behalf of our clients before the Danish courts, the Danish authorities, the EU courts, the EUIPO and WIPO but also on assistance provided to our clients when they are being sued or are suing others abroad. In cases conducted abroad, we would normally also assist with finding local counsel. We have a unique network of law firms and other advisors in practically any country in the world, and therefore we are able to select an adviser that fits exactly to the specific client and case. Also, we assist with communication, instruction and budgeting and keeping the budget in relation to foreign liaisons, just as we specialized in coordinating all legal proceedings in several countries (multinational litigation).

Another but equally important aspect of our intellectual property law work concerns what one may term ’transactional IP’. This includes all types of agreements concerning intellectual property rights, including agreements where intellectual property law is not the primary focus point. The first category includes, inter alia, confidentiality agreements, license agreements, transfer agreements and R&D agreements. The second category includes intellectual property law regulation in purchase/sales agreements and agreements concerning business transfers, including not least the guarantees. In addition, we provide assistance to our colleagues in Corporate /Mergers & Acquisitions in respect of completing intellectual property law aspects of due diligence processes as part of M&A projects.

Lastly, an aspect of our work includes what may be designated as “regulatory” and pre-emptive advice. In practice this means advice which aims to ensure that the activities contemplated by our clients can be legally carried through.  This comprises a wide range of disciplines, including clearing of marketing campaigns, complying with spam rules, freedom-to-operate analyses (how to avoid infringing third party rights) and compliance with other legislation.

Trademarks, design- and domain names

Our team provides fully integrated and specialized advice on trademarks, designs and domain names and the management hereof, including:

• Availability searches in relation to the clearing of trademarks and assistance in connection with selecting a trademark
• Preparation of strategies for obtaining the best possible protection of trademarks and designs
• Assessment of the distinctive character of a trademark and preparation of lists of goods and services for filing trademark applications
• Handling applications with a view to registering trademarks (nationally, regionally and internationally), including correspondence with trademark offices and foreign cooperation partners
• Monitoring trademarks and designs with a view to identifying any attempts to register an infringing right
• Renewal of trademarks and designs
• Assessment of whether or not a trademark is put into genuine use and advice in relation to fulfilling the duty to make proper use of a trademark
• Conducting opposition and revocation proceedings before the Danish Patent and Trademark Office and before the EUIPO (the authority which handles the registration of EU trademarks and EU designs)
• Conducting infringement and revocation proceedings before the courts in Denmark and abroad (the Court of Justice of the European Union)
• Preparation of co-existence and license agreements
• Conducting due diligence investigations.

We apply a customized and state-of-the-art IT system to manage our clients’ trademarks and designs. Our clients are offered online access to information about their own rights portfolio and the system provides the opportunity for our clients to generate reports containing relevant information about the status of the individual client’s trademarks and/or designs, just as each client has direct access to its own registration certificates in the system.

Franchises and chains

Our team provides advice to franchises and chains. We have extensive experience in these areas, and we provide advice to a number of national and international chains, including franchises, capital chains and voluntary chains. We specialize in a wide range of legal areas relevant to franchises and chains, and we develop our concepts for franchises and chains on a current basis, including by developing new contract types, contract mechanisms and cooperation forms.

We work closely with EU & Competition, Real Estate and Corporate / Mergers & Acquisitions to draw on their expertise. This ensures that our clients receive optimum advice.

We provide coordinated advice on all aspects relating to franchises and chains, including intellectual property law, marketing law, competition law, real estate and the formation of contracts.

IT and outsourcing

We provide legal advice to clients in all matters concerning IT, including:

• Outsourcing of IT operations and business processes in Denmark and abroad. We specialize in financial institutions’ outsourcing of IT operations
• Acquisition of IT systems, both standard systems and individually developed systems, including the conclusion of license agreements and development agreements concerning software
• Defects in IT systems
• Acquisition and sale of IT companies and providing advice concerning IT issues in relation to the transfer of other companies, including concerning division of IT systems and provisional delivery of IT services to divested entities; all in cooperation with Corporate /Mergers & Acquisitions.

Our experts also provide advice on:

• E-commerce, including concerning requirements in respect of setting up websites, web payment systems and marketing via e-mail
• Protection of information privacy, including concerning the registration and passing on of data
• Preparation and implementation of compliance programmes.

Ratings

“One of the best in Denmark in their field. Very flexible, very well updated on latest practices and strong focus on commercial needs.”
Legal 500, 2022, Intellectual Property

“Strong practice with substantial expertise in a variety of IP issues, including patents, trade marks and copyright.”
Chambers Global, 2021, Intellectual Property

“Highly talented team. First to implement new trends into contracts. Great knowledge of the market.”
Legal 500, 2022, Information Technology