RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q2/SWE/1
24 October 1997
(97-4652)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON TRADEMARKS, GEOGRAPHICAL
INDICATIONS AND INDUSTRIAL DESIGNS
Sweden1
The present document reproduces the questions put to the delegation of Sweden and the
responses given in the review of legislation on trademarks, geographical indications and industrial
designs at the Council's meeting of 11-15 November 1996.2
_______________
I. REPLY TO THE GENERAL QUESTION CONCERNING PRIORITY RIGHTS3
Does your country recognize a right of priority on the basis of an earlier trademark
application filed in any other WTO Member by a national of a WTO Member?
Article 3, paragraph 1 of the International Tr ademark Regulation and Article 8 of the Design
Protection Regulation both contain provisions on priority to be given on the basis of applications
originating in a country party to the Paris Convention and, in addition, to applications originating in
other countries where the Registration Authority, for special reasons, considers that the same priority
should be given.  The Swedish Patent and Registration Office implements these provisions to the
effect that priority is given also to applications  originating in WTO countries which are outside the
Paris Convention.
II. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
1. Article 1 of the Swedish Trademark Act sets forth the type of sign that is capable of being
protected as a trademark.  The list of signs does not include colour marks.  Please explain whether
colour marks are capable of constituting a tradema rk under Sweden’s trademark law and, if so, under
what authority.
                                                     
1 As regards laws and regulations relevant to the areas under review as notified by Sweden under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/SWE/1 as well as documentsIP/N/1/SWE/T/1-4, IP/N/1/SWE/O/1, IP/N/1/SWE/G/1 and IP/N/1/SWE/D/1-2.
2 The minutes of this meeting are contained in document IP/C/M/11.
3 At the meeting of the TRIPS Council of 11-15 November 1996, Members agreed to respond to this
question in the context of the present review (document IP/C/M/11, paragraph 43).IP/Q2/SWE/1
Page 2
Article 1, second paragraph, of the Trademarks Act defines a trademark as "any sign capable
of being represented graphically" and then goes on with a non-exhaustive exemplification of what that
concept covers.  This means that also a colour mark can constitute a trademark;  furthermore, this fact
is clearly indicated in the preparatory documents (Bill No. 1992/93:48, p. 71, whereby this article was
amended due to Sweden's adherence to the European Economic Area).  As in the case of all other
marks, a condition is that it is capable of distinguishing goods or services from other such goods orservices.
2. Please explain whether Swedish trademark law establishes a presumption of likelihood of
confusion in the determination of confusing simila rity in cases where identical marks are used on
identical goods, as required by Article 16.1 of the TRIPS Agreement.  If so, please identify and
explain the legal basis for this presumption.
The presumption referred to in Article 16.1 of the TRIPS Agreement follows from the
provisions in Article 4 of the Trademarks Act (which deals with the scope of the rights conferredunder the Act) and, in particular, from Article 6, which states that "symbols shall be deemed to be
confusingly similar under this Act only if they relate to goods of the same kind or a similar kind".  If
the signs are identical and the goods or services are the same or similar, it follows from this provision,
as applied in practice, that a confusing similarity would be presumed to exist in the eyes of the
members of the public in the market place.  (If, on  the other hand, the signs are not identical, theconcept of "confusing similarity" between the signs has to be considered on the basis of a likelihood
of confusion among the members of the public.  This is stated in the preparatory documents (the
above-mentioned Bill, p. 78) and this is also applied in practice.)
3. Article 20 of the TRIPS Agreement states that use of a trademark shall not be encumbered by
special requirements such as use in a special form.  However, Article 10 of the Swedish TrademarkAct states that "it may, according to what is considered reasonable, be ordered that . . . the symbols
may be used only in a special manner" in certai n situations where a registered trademark has co-
existed with an unregistered trademark for a period of time.  Please explain how Swedish law
complies with  Article 20 of the TRIPS Agreement.
The provisions in Article 10 of the Trademarks Act refer to certain special cases where there
are conflicting rights in the same mark or similar marks.  In those situations, the rights may continue
to co-exist but it may be prescribed that certain restrictions apply, for instance, as regards the manner
in which either of the marks, or both, may be used.  This is a provision in the interest of the right-
owners and is not a situation in which (in the terms used in Article 20 of the TRIPS Agreement) the
use of a mark is "unjustifiably encumbered".
4. Article 25a of the Swedish Trademark Act permit s the proprietor of a trademark to present
"proper reasons" for continued registration despite non-use of a trademark.  Please explain the
circumstances or situations that would constitute "proper reasons" sufficient to satisfy this provision,
including, where relevant, information regarding administrative or judicial decisions addressing this
issue.
The "travaux preparatoires" relating to the provision referred to (the above-mentioned Bill,
p. 100) state that "it is not possible to give any closer indications as regards the situations in which theholder of a trademark right may invoke valid reasons for the non-use of the trademark.  The basic
principle would, however, be that situations which occur independently of the holder may form such
reasons.  Thus, the trademark holder should not be able to successfully invoke that he has not been
able to use the mark due to lack of resources.  For example, financial difficulties, difficulties to find a
qualified labour force or product would not constitute valid reasons for non-use of the mark.  Suchproblems usually form a normal part of an activity and more or less important difficulties in thisIP/Q2/SWE/1
Page 3
respect would normally not constitute sufficient reasons for non-use of the mark.  Exception should,
however, be made for those cases where the difficulties occurred independently of the trademark
holder's will or ability, for instance when they occurred as a consequence of war or other particular
crisis situations".  Then the Bill goes on to say:  "Particular circumstances prevail in certain branches
as a consequence of the fact that, in respect of the goods for which the mark is intended, special
approval or other authorization from public authorities is needed.  An example is the registration ofpharmaceutical products, authorization for the handling of certain chemical products or safety
marking of products.  Where there is thus a factual impossibility to use the mark pending such
authorizations, etc, this must be considered to constitute such circumstances over which the trademark
holder does not have any influence and, consequently, would constitute such valid reasons which
prevent the mark from being used".
5. Please explain whether Swedish law permits or precludes the assignment of a registered
trademark without the transfer of the underlying business.  If it precludes the assignment of aregistered trademark where the underlying business is not transferred with the mark, please explain
how this complies with the provisions of Article 21 of the TRIPS Agreement.
Swedish law certainly permits the assignment of a trademark independently of the business to
which it belongs.  (The special provisions in Article 32 of the Trademarks Act on assignments in
connection with the transfer of a business activity establish only a presumption that, in the case ofsuch a transfer, also the trademark is transferred, and does not affect the general rule of assignability
of trademarks.)
6. Please explain how Sweden protects well-known marks as required by Articles 16.2 and 16.3
of the TRIPS Agreement, particularly where such marks are not registered in Sweden.
The protection of well-known marks, also such which are not registered in Sweden, follows
from several provisions in the Trademarks Act.  First , Article 2 provides for protection also of marks
which have not been registered but which have been established on the market;  this obviously means
that also well-known marks which have been established on the market in the country enjoy the same
protection as registered marks.  Secondly , Article 6, first paragraph, of the Act provides that, generally
speaking, symbols shall be considered to be confusin gly similar only if they relate to goods of the
same or similar kind, that is, that the protection of a mark extends only to identical or similar goods or
services.  However, the same Article, second paragraph, provides that confusing similarity may in
certain cases be invoked beyond this identity/similarity of the goods/services, namely for the benefit
of trade symbols which have a reputation in this country where the use of another similar symbol
would take unfair advantage of, or would be detrim ental to, the distinctive character or reputation of
the symbol having such reputation.  Thirdly , Article 14, sub-paragraph 6 of the Trademarks Act
provides that registration may not be granted in  case the application relates to a mark which is
confusingly similar (in the above-mentioned sense provided for in Article (6) to another person's trade
symbol which is established on the market before the application for registration was filed.  Of
importance in this context is also the provision contained in the same Article, sub-paragraph 7,
according to which registration shall be refused if the mark is confusingly similar to a trade symbol,
which, at the time of the application, is being used by another person and the applicant had knowledgeabout that use at the time of the application and had not used the mark before the other symbol was
first used.  These provisions taken together mean (a) that well-known marks as such are protected, and
(b) in addition, that the protection extends beyond the identical or similar goods or services for marks
having a reputation.
7. Please explain how geographical indications are protected under Sweden’s law, as required
by Articles 22 and 23 of the TRIPS Agreement.IP/Q2/SWE/1
Page 4
Geographical indications enjoy protection under the Marketing Practices Act.  The purpose of
the Act is to discourage any acts which are inappropriate in relation to consumers.  To this effect, the
Act contains various provisions aiming at prohibiting such acts.  In particular, Article 6 contains a
prohibition for persons involved in business activities to use, in the course of such activities,
allegations or other statements which are misleading as regards business activities conducted by
themselves or by other persons;  this relates, in particular, to allegations or statements relating to, inter
alia, the type, quantity, quality or other characteristics of the product, its origin  (emphasis added), use
or effects on public health or environment.  In the case of a violation of this prohibition, a special
Court, called the Market Court, may issue orders, also interimistic ones, prohibiting, on penalty of a
fine, the continuation of such violations.  If such an order is not obeyed, a new such order may be
issued.  Compensation for damages shall be paid for, inter alia , violations of such a prohibition.
Indications relating to wines and spirits enjoy protection under the Act on Marketing Practices
Relating to Alcoholic Beverages of 1978, as amended in 1995.  Article 2a of that Act contains a
prohibition to use, in the marketing of alcoholic beverages, false or deceptive indications of originwhich directly or indirectly state that the beverages are produced or manufactured in the foreign state,
or in a region or a locality in that foreign country.  This applies also where the true origin is indicated
or where the indication is used only in translation or is accompanied by expressions like "kind",
"sort", "type", "imitation" or the like.  Any act which violates this provision shall be considered as
inappropriate in relation to consumers and subject to prohibitions, etc. under the Marketing PracticesAct mentioned above.
8. Please explain whether the nature of goods or services to which a trademark is to be applied
can serve as an obstacle to the registration of the mark under Swedish law.  If so, please identify andexplain the subject matter excluded under this authority, the relative provisions of the Swedish law
that serve as a basis for these exclusions, and how this practice complies with Article 15.4 of the
TRIPS Agreement.
The Trademarks Act contains no provisions under which the nature of the goods or services to
which the trademark is applied can serve as an obstacle to the registration of the mark.
9. Please describe the methods by which indu strial designs are protected in Sweden, in
particular:
(a) the form or forms of intellectual property used to protect the design
(e.g., patent, copyright, sui generis);
(b) the conditions that must be satisfied to obtain the grant of such protection
(e.g., whether designs must be new or original and the parameters of these concepts),
and a brief description of the registration or granting procedure;
(c) the nature of the rights granted and the term of protection provided;(d) the nature of remedies available to the owner of each type of protection, including a
description of the conditions that may be imposed (e.g., whether commercial use is
required); and
(e) whether any exceptions to protection or rights exist for each type of intellectual
property involved.
(a) Industrial designs are protected, on the basis of a registration, by a sui generis  system under
the Design Protection Act of 1970.  Such de signs may, however, also enjoy protection,IP/Q2/SWE/1
Page 5
without formalities, as works of app lied art under the Copyright Act of 1960.4 Where the
requirements in respect of originality are met and the design, therefore, is a work of applied
art, it may enjoy protection under both the sui generis system and the Copyright Act.
Furthermore, a product enjoying design protection may, in respect of the technical idea, be
protected under the Patents Act5, and the design may also form a trademark which may enjoy
protection under the Trademarks Act, according to which a trademark may consist of the"shape or the ornamental aspects of goods or their packages".
(b) A design may be registered for design protection under the sui genesis system only if it is new
and has an individual character; also, it must substantially differ from what has become
known before the filing date of the application.  Applications for registration are first
examined in a preliminary way by the Patent and Trademark Office in respect of both formal
and substantial requirements for protection.  Where no obstacles to approval of the
application are found, a notice of the application is published in order to give the public andpossible holders of conflicting designs an opportunity to file, within a certain period of time,
an opposition against the application.  At the expiry of the period, the examination of the
application continues and, if no obstacles are found, a decision is taken on approval of the
application.  Details about the registration procedure are to be found in the Design Protection
Regulation of 1970.  Protection of a design under the Copyright Act is free of formalities.
(c) The holder of a design right has an exclusive right to exploit the design commercially.  This
means that nobody else is, without authorization of the holder, allowed to exploit the design
in the course of business activities through the manufacture, import, offering for sale, selling,
transfer or rental of a product whose appearance does not substantially differ from the design.
The term of protection is five years from the date of the filing of the application forregistration and may be renewed for a further period of five years; this means that the design
may be protected for a maximum of 15 years.
(d) If an infringement of the right in a design is  committed wilfully or with gross negligence, it is
a criminal offence which can be punished by a fine or imprisonment up to two years.  The
infringer may also be obliged to pay damages.   Where the infringement is committed wilfully
or with negligence (not necessarily gross neg ligence) the infringer shall pay an equitable
compensation for the exploitation and for further injury caused by the infringement.  In the
determination of the amount of the damages also circumstances other than such of a purely
economic significance shall be taken into account.  If, on the other hand, the infringement is
committed neither wilfully nor negligently, th e infringer shall pay a compensation for the
exploitation if and to the extent it is considered reasonable.  The Design Protection Act also
contains provisions on the issuing of injunctions against the committing of any act
constituting a design infringement, and on Court orders under which objects, the use of which
would constitute design infringements, shall be altered or destroyed or, against compensation,
surrendered to the injured party.  As the exclusive right in a design covers only commercial
exploitation, a purely private activity cannot be considered as an infringement.
(e) The Design Protection Act provides that the design right does not apply to the use of goods (is
exhausted) which have been put on the market within the European Economic Area by the
design holder or with his consent.  The Act also contains provisions under which a person
who exploited a design in the course of business activities, when an application for the
                                                     
4 The text of the law in question can be found in document IPN/1/SWE/C/1.
5 The text of the law in question can be found in document IPIN/1/SWE/Pll.IP/Q2/SWE/1
Page 6
registration of the design was made by another person, may, under certain conditions,
continue to exploit the design.  Furthermore, the Government is entitled to prescribe
exceptions from the  design protection for spare parts for use in the repair of foreign aircraft.
10. Please explain how textile designs are protected under your law.
Textile designs may be protected under the Design Protection Act under the same conditions
as other kinds of designs.
11. Article 3 of the Swedish Trademarks Act, it appears, requires a person to have the right to
bear a surname in order to register that name as a trademark.  Please explain how this provision is
consistent with Article 15.1 of the TRIPS Agreement.
As can be seen from Article 1 of the Trademarks Act, signs such as "words, including
personal names" are capable of being registered as trademarks.  The provision in Article 3 of the same
Act governs another situation, namely the right of a person to use, also without registration, his own
name as a trademark;  the provision is, in this sense, complementary to the general rules in Article 1on the rights to register or use signs, including names, as trade symbols.
12. Article 25 of the Swedish Trademarks Act requires that a mark must be used in the registered
form or in a form "where the difference concerns  only insignificant elements and does not alter the
distinctive character of the mark".  Please explain how this provision is consistent with Article 20 of
the TRIPS Agreement, which provides that the use of a trademark shall not be unjustifiablyencumbered by special requirements, such as use of the mark in a special form.
The provision which is quoted in the question is Article 25a (not Article 25), which deals with
invalidation of a registration of a mark in case of non-use of the mark (a situation which in the TRIPS
Agreement is governed by Article 19).  The provision quoted (from Article 25a, second paragraph)
concerns the kinds of use which constitute use for the purposes of maintaining the right in atrademark.  Such use is, in the first place, use of the mark in its original form but it extends , for the
purposes of maintaining the registration, the notion of use also to situations where the mark is used in
a form differing from the registered one, etc.  The provision, consequently, has its application only in
relation to Article 19 of the TRIPS Agreement on requirement of use and has nothing to do with
Article 20 of the same Agreement, which addresses the general issue of unjustifiable requirementsrelating to the use of the mark.
III. REPLIES TO QUESTIONS POSED BY JAPAN
1. Since it is not clearly stipulated in the Design Protection Act that textile designs are protected
in conformity with the TRIPS Agreement, please explain under which provision of the Act or other
copyright related law these designs are protected.   Moreover, to make sure that the opportunity toseek and obtain protection for textile designs is not impaired unreasonably, please explain your
system or practice particularly with regard to cost, examination or publication (cf. paragraph 2 of
Article 25 of the TRIPS Agreement).
There are no special rules for textiles in the Design Protection Act.  Consequently, textiles
may be protected under the Act under the same conditions as other designs;  in order for the right to
be registered, the textile pattern must meet the normal requirements as regards novelty and individual
character.  Also, artistic textile designs may be protected, without formalities, as works of applied artunder the Copyright Act.  As regards protection under the Design Protection Act, the Patent and
Registration Office carries out a preliminary examination of the application in respect of the formalIP/Q2/SWE/1
Page 7
and substantial requirements resulting in a prelim inary decision;  thereafter follows an opposition
procedure and then a final examination and a decision as to the registration.  In general, the applicant
will receive the results of the preliminary examination (a decision to initiate the opposition procedure
or an invitation to submit a statement or a correction) within six months from the filing of the
application.  Multiple applications are allowed, but an application must not include more than
20 designs, and there must be a link between the designs as regards production and use.  The fees forapplications and other acts in respect of a design application are included in Sections 29 and 30 of the
Design Protection Regulation.
2. The word "selling" is not included in the scope of the right to a design provided for in
Article 5 of the Design Protection Act.  If the word "assigning" corresponds to the word "selling",
please elaborate on the difference between the two (cf. paragraph 1 of Article 26 of the TRIPS
Agreement).
According to Article 5 of the Design Protection Act, the right in the design includes, in
addition to other acts, also the act of "selling" products whose appearance does not substantially differ
from the protected design.
3. In your country, it is stipulated in Article 7 of the Design Protection Act that importations of
spare parts and accessories to be used for the repair of aircraft may be excluded from the right to a
design.  Please explain its consistency with paragraph 2 of Article 26 of the TRIPS Agreement.
The Design Protection Act applies also to, for instance, spare parts and accessories to
aircrafts.  Article 7 of the Act contains, however, a provision to the effect that the Government may
prescribe that such parts and/or accessories may, notwithstanding the design right, be imported into
the country for use in the repair of an aircraft domiciled in a foreign country;  a condition is that that
foreign country grants similar advantages in respect of a Swedish aircraft.  The rationale for thatprovision is that it must be considered as a legitimate interest of a third party to be able to repair an
aircraft in a foreign country.  The provision referred to has a narrow scope of application and does not
unreasonably prejudice the legitimate interests of the design holder.
4. In your country, the first duration of protection available is less than ten years, and any
renewal thereafter cannot be requested at the time of registration.  It may happen, therefore, that theduration of protection is less than ten years when the first duration has lapsed and the restoration is
not permitted afterwards.  Would this not be contrary to the spirit of paragraph 3 of Article 26 of the
TRIPS Agreement?
The only conditions for the renewal of a design registration are of a formal nature, namely
that an application in this respect is made in due time and that the fees are paid.  The examination asto the substantive requirements for the protection of a design is carried out only once; that does not
rule out such formal requirements for the renewal of a registration as mentioned above.