Posts by: Maria Dam Jensen | (9) posts

Danish designer barred from using own name as trademark

About a year ago the Danish Commercial and Maritime Court gave their decision in a case between Topbrands and the Danish designer Benedikte Utzon. You can read about it here.

In short, the court found that Benedikte Utzon could no longer use her name as a trademark in any commercial activities within jewellery, leather goods and apparel, as Topbrands had bought the trademark rights to the brand Benedikte Utzon after her bankruptcy in 2012.

Benedikte Utzon appealed the case to the Danish Supreme court as she found that there were several untouched issues, and that the case is a matter of principle.

The Supreme Court states in their decision, that the term good marketing practice entails that commercial use of one’s own name must be in a way, that it is not unfair, improper and damaging in relation to the owner of the trademark. Moreover, the Court states, that a person that has used his own name as a trademark, and assigned this trademark to a third party, the principle of good marketing practice entails that he is then prevented from using his own name as a trademark for those types of goods, for which the trademark is registered.

Further, the Court refers to the preparatory works of the legislation, from which it follows that if a business owner has used his own name as a trademark in a way that it to the public appears as a trademark rather than a personal name, and then assigns the trademark to a third party, without any reservations as to the future use of the name, he then precludes himself from using his own name as a trademark for those types of goods as covered by the trademark.

The Supreme Court has now given their decision in the case, and confirms the decision from the Commercial and Maritime Court. Moreover, the court finds that Benedikte Utzon has already infringed Topbrand’s trademark rights and she is ordered to pay 250,000 DKK in damages.

Benedikte has now changed her name to Dicte Utzon, and has pronounced, that she is considering taking the case to the European Court of Human Rights given that she is now barred from using her birth name ever in her work as a designer.

As an IP professional it is always interesting to follow such borderline cases and see where the Supreme Court draws the line, even as in this matter the preparatory works of the law is actually rather clear on this issue. But we now know for sure, that you can wind up in a situation, where you are actually prevented from using our own name. It will be interesting to see the outcome of the case if Benedikte Utzon, now Dicte Utzon decides to take it further.

Maria Dam Jensen, Legal Counsel

Names as trademarks – maybe not such a good idea!

In Denmark the owner of a trademark cannot prevent others from branding themselves under their own name, as long as it is done in accordance with good marketing practice. This means that as long as the use of your own name does not lead to confusion, it is possible to trade under this name. Therefore if one is using his/her own name as a sign of recognition and assigns it to another company, then this person will be prevented from using his/her name as a sign of recognition in commercial activities conflicting with the proprietor. Therefore in that sense a name does not differentiate from “normal” trademarks.

On 30 November 2015 the Danish Commercial and Maritime Court gave their decision in a case between Topbrands and the Danish designer Benedikte Utzon. For several years she has designed clothing under her own name, and she has built her business on her name as her trademark. In 2012 her company went bankrupt and the Danish company Topbrands bought the main part of the bankrupt’s assets, including the unregistered trademark rights to “Benedikte Utzon”. Topbrands has since registered the name as a trademark in Denmark and EU. Benedikte Utzon herself was offered to buy the trademark for 20,000 DKK, but as she had no money after the bankruptcy she wasn’t able to do so.

Since the bankruptcy Benedikte Utzon has started a new brand under the name “My Little Curvy Love”. According to the Commercial and Maritime Court, she is not permitted to use her own name to market the company. Not even in variations as “My Little Curvy Love by Benedikte Utzon” or “designed by Benedikte Utzon”. She can still use her name in a personal context, but not as a sign of recognition in commercial matters conflicting with the existing brand “Benedikte Utzon”. Therefore she is actually now prevented from writing “Designed by Benedikte Utzon” on any commercial activities within jewellery, leather goods and apparel, as this will lead to confusion amongst the consumers.

Benedikte Utzon has appealed the case to the Supreme Court, as she finds that there are several untouched issues. She believes that the case is a matter of principle, as it concerns the basic right to the use of own name. Especially for designers, musicians, writers and artists she feels that this case is important, as they often are all building their career on their name.

On the other side stands Topbrands which bought the trademark. “My company bought the trademark – she even rejected buying the trademark “Benedikte Utzon”, and as we are now the owners of the trademark, we of course want our rights to be respected. You can’t just ignore others’ rights”, says Lasse Skarup from Topbrands.

As an IP professional it will be interesting to see where the Supreme Court will draw the line. Do they find that an owner of a trademark, which is also the name of a person, must accept use – that up until this point – was seen to be in conflict with good marketing practice, and therefore must now accept use of names in loyal commercial activities? Or will they find that a trademark that is rightfully obtained and used as a trademark must be respected as a trademark, even though it is the name of a person. And, is it fair that you can wind up in a situation, where you are not allowed to put your name on your work? We’ll see..

Maria Dam Jensen, Legal Counsel

New hope for trademark owners in China

In China, the trademark system is based on the “first-to-file” system, which means that the first company or person to file owns the legal right to the trademark. There is no requirement for the intention to actually use the mark as we know it from a.o. the US system.

Up until now the so called “Trademark Squatters” have been a huge problem in China. These Trademark Squatters file hundreds of names with the Chinese authorities long before the brand owners enter the Chinese market and then they try to extort the owners in settlements, forcing them to “pay up” if they wish to be able to use their trademark in China.

Revised rules to prohibit trademarks registered in bad faith
China has recently implemented a new revised set of rules that among other things prohibits registering trademarks in bad faith. This is a step towards the system we know from Europe.

Until this point, trademark owners have been left with the options of either creating an entire new trademark for the Chinese market, expensive settlements or taking legal actions and spending huge amounts on legal fees in the hope of gaining legal right to their own trademark. Tesla, Apple, Sothesby’s and Michael Jordan are only some of the many trademark owners that have fought battles with these Chinese Trademark Squatters. Many of these battles have proven unsuccessful up until now.

Recently, the American brand Michael Bastian has fought for their trademark and won the case against a Trademark Squatter before the Chinese Trademark Review and Adjudication Board (TRAB). A Chinese company had registered the trademark Michael Bastian’s English name and the Chinese transliteration in 2007. The TRAB found that the Trademark Squatter had abused the trademark registration, use and administration process in China even though there was insufficient evidence of Michael Bastian’s use of the trademark or publicity in China prior to the date of filing by the defendant. Further the TRAB found that the defendant violated the principle of Honest and Good Faith. According to his principal counsel Foley & Lardner, Michael Bastian is the first non-Chinese individual or entity to win a case under the principle of honest and good faith despite little evidence of prior use.

A step in the “right” direction, but…
So does this mean that all troubles are solved in China and that trademark owners can feel home safe? Definitely not! It is important that trademark owners are aware that there are distinguishing features in this decision and uncertainty as to how much weight the TRAB will give to this decision in the future. In the Michael Bastian case, the TRAB cited that the defendant had engaged in similar conduct and attempted to file many trademarks identical or similar to other prior trademarks. Therefore in this case it was rather clear that the defendant actually was a Trademark Squatter. It is therefore uncertain whether the TRAB would have reached the same decision had the defendant not clearly just registered trademarks to put pressure on right holders and make money from this.

However, the decision is a step in the “right” direction so to speak. Moreover, this decision is important in the sense that it will send a signal of increased confidence to foreign companies entering the Chinese market, and to use their name and IP to build their brand in China. Hopefully, this decision will set precedent and make it easier for trademark owners to regain and protect their IP rights in China.

It is still uncertain what line the TRAB will take against these Trademark Squatters, and we at Awapatent will definitely advice right holders to still consider the previous cases in China as a warning to get their trademarks registered early in China, at least if at some point in the future China is considered a market of interest.

Maria Dam Jensen, Legal Counsel

The “LEGO-MAN” is still protected as a trademark

Just last week the General Court of the European Union decided in a very interesting case that has been going on for years between LEGO and Best-Lock Construction.

In 2000 Lego registered the below three-dimensional community trademarks for “games and playthings”. The Danish toy giant has now won a 4 year long legal battle against their competitor Best-Lock Construction. Best-Lock was of the opinion that LEGO did not have exclusive rights to the classic LEGO figure, however the European Court of Justice did not agree, and on 16 June 2015 they rejected the lawsuit.

legoman

For several years Best-Lock has produced small figures very similar to the classic Lego figure just selling them at a significant lower price. Lego’s trademark rights have excluded Best-Lock from the European market, and the recent decision from the General Court has firmly established that Best-Lock will not be entering the European market in the future.

Best-Lock had applied for a declaration of invalidity of the above trademarks arguing that the shape of the goods in question is determined by the nature of the goods themselves and that the toy figures as a whole (namely the possibility of joining them to other interlocking building blocks for play purpose) and in their particulars, provided technical solutions (namely being combined with other building blocks)[1].

However the General Court has concluded that the characteristics of the shape of the figures in question are not necessary to obtain a technical result.

As a result the world renowned Lego figure is still protected as a trademark. This decision does however only have effect in Europe and Lego is still facing their products being copied in other parts of the world. Lego has ongoing cases like this against both Best-Lock and also other companies where the Lego figure and the basic shape of the classic Lego brick are being copied.

It will be interesting to follow these decisions, and see how the different courts will evaluate the cases.

Maria Dam Jensen, Legal Counsel

[1] Curia Press Release No 71/15

Trademark holders think it .sucks!

Defensive tactics should be a part of the brand protection strategy of every trademark owner. New developments within the area of domain names also make it essential to consider which offensive strategy to have for brand protection.

Domain names are registered with the central authority called ICANN (Internet Corporation for Assigned Names and Numbers). A few years ago it was decided to expand the list of website suffixes (Top level domains – TLD) from the traditional as we know, i.e.  .com, .dk and .se to an expanded list.

logo-white

A long list of TLD’s have been registered already ranging from .adult to .donut, but the newly registered .sucks is causing quite a bit of controversy. Now, you actually have the opportunity to register your trademark under the .sucks domain, and perhaps brand owners should have done so. As of 1 June 2015 non-company affiliated registrations are accepted at the .sucks domain. And this for only $ 9.95. Before sunrise the price for brand owners was $ 2,499. This significant difference in price has also caused a lot of harm; some have even called it economic extortion[i].

Several companies and also celebrities are concerned that their names may be associated with domains and websites that will be created just to discredit these and cause harm to their brands. Apple, Kevin Spacey and Tailor Swift have already registered under the .sucks domain. Actually the .sucks domain was expressly created as being a platform for criticism, “designed to help consumers find their voice and allow companies to find value in criticism”. Vox Populi, the registry company behind .sucks, says they are actively seeking companies to register their brands on the .sucks domain, arguing that it has “the potential to become an essential part of every organization’s customer relationship management program”. They do, however, also hope that the small price for non-company affiliates will attract consumers to register and create a platform for discussion and debate of the different brands. The company has even released a video that includes an endorsement from consumer advocate Ralph Nader, and it includes scenes from civil rights protests with the voice of Martin Luther King. Follow the link to see the video:

The fact that consumers are allowed to use a company name or trademark in a fair manner for the purpose of honest, good-faith criticism and complaints, puts brand owners in a difficult position, as it makes .sucks domains difficult to challenge in UDRP-cases[ii].

Many companies have, however, been dealing with this before, as it has been possible to register domains such as, e.g. x-brandsucks.com since the beginning of the domain system. The criticism and complaints towards a specific brand do however become more explicit under the .sucks domain. Moreover, even when brand owners actually have registered their trademark under .sucks, it is still possible for consumers to register variations, such as x-brandreally.sucks.

Therefore we at Awapatent as IP professionals urge trademark owners to decide which approach to have towards this issue, and preferably as an integrated part of their IP strategy.

At Awapatent we stride to help brand owners in having the best IP strategy possible, we assist our clients in navigating through challenges like e.g. the .sucks domain issue. We also offer surveillance of the registration of third party trademarks in Trademark Clearinghouse in relation to such new TLD’s.

Maria Dam Jensen, Associate, Legal Counsel

[i] http://marketingland.com/controversial-sucks-domain-almost-here-121505
[ii] Uniform Domain Name Dispute Resolution Policy

Will trademarks go up in smoke?

More than 10 years ago the Tobacco Products Directive (2001/37/EC) was adopted in the EU, and on 26 February 2014 the revised Tobacco Products Directive governing the manufacture, presentation and sale of tobacco and related products was formally approved by the European Parliament. This new directive sets in more stringent rules for tobacco and related products with the focus on limiting their appeal to young people.

Before implementation, these new rules were subject to a great deal of discussion, as especially the tobacco companies feared that the European Parliament would implement a requirement of plain packaging as seen in Australia and New Zealand.

Australia was the first country to implement these new measures mandating plain packaging for tobacco products. Australia has since 2012 completely banned the use of graphical trademarks or other kinds of decoration on cigarette packaging. Now, e.g. CAMEL must be written in a neutral font, size and position on the cigarette packages. Brand owners can therefore not use their trademarks in the stylized logo form that we usually see.

Cigarette packages from Australia. Source: http://www.theaustralian.com.au/

So what will these new cigarette packages in the EU look like?

Source: http://europa.eu/rapid/press-release_MEMO-14-134_en.htm

Source: http://europa.eu/rapid/press-release_MEMO-14-134_en.htm

From now on packages in the EU will feature mandatory pictures and text with health warnings covering at least 65 % of the front and back of cigarette packs, which must be placed on the top edge of the packaging. In addition, 50 % of the sides must be covered with health warnings such as “Smoking Kills – quit now”. Moreover, no promotional or misleading features or elements will be allowed on cigarette packaging.Therefore, from now on only a small part of the packaging will be available for branding. And in addition, Member States are allowed to introduce further measures for plain packaging if justified on grounds of public health, and where found proportionate and not leading to hidden barriers to the trade between member states[i]. Therefore we might see EU Member States implementing plain packaging measures as seen in Australia.

Of course the tobacco companies are not exactly jumping for joy over the new directive or the measures for plain packaging, and have claimed that it will have unintended consequences.  One of their arguments is that plain packaging will be easier to copy, and it will be harder to prevent counterfeit products from entering the markets.

What about the trademarks?

As an IP professional my concern immediately goes to the issue with possible restrictions on how to use trademarks on the packaging, and whether these new requirements jeopardize the actual function of trademarks.

One of the fundamental features of trademarks is their function as an indication of origin. Trademarks make it possible for owners to distinguish their products from other manufacturers of the same products. This fundamental function will not be fulfilled if trademarks are not visible, as consumers will not be able to make a reasoned choice based on their preferences. If such plain packaging requirements are implemented in the EU, the trademark owners will be prevented from using their trademark to distinguish themselves from their competitors, which will jeopardize the ability of these trademarks to function as an indication of origin.

Another issue is the “use requirements”. After a 5-year period from the registration date, a trademark can be cancelled – entirely or partially – for goods and/or services for which it is registered, if the owner is not able to prove use of the trademark for these goods/services.

Therefore, if the tobacco companies can no longer use their trademarks for tobacco products, they could in theory after 5 years risk being met with cancellation actions putting their trademarks in great danger, as they will not be able to prove use of their trademarks for tobacco products.

A cancellation on such grounds seems completely unreasonable, and fortunately European case law states that even where there has been no genuine use of a trademark in the relevant period, the registration shall not be revoked if there are “proper reasons”[ii].

Even though revocation based on non-use as a result of plain packaging would be refused as an argument, there is still the risk of the trademarks losing their actual value.

If consumers stop associating trademarks such as CAMEL and KINGS, all meaning of the trademark will be lost, regardless of whether the trademark technically still exists. The actual value of the trademark will be gone, and the tobacco manufacturers will witness their trademark rights going up in smoke.

It will be interesting to follow how these new rules will affect trademarks, and whether the same measure will be seen implemented in other areas as well. If the focus is public health then what about unhealthy foods and alcoholic products?

Maria Dam Jensen, Legal Counsel

[i] http://europa.eu/rapid/press-release_MEMO-14-134_en.htm

[ii] Case T-28/09 Mo-Hwa Park v OHIM and Case C-259/02 La Mer Technology Inc v. Laboratories Goemar

INK-rimination?

Recent years it has been a hot topic whether or not tattoos are copyright material, and whether or not a tattooist can claim copyright in a tattoo on another person’s skin. Furthermore, it seems more and more tattoo artists (if this is what we should call them) are specializing in fine art reproductions and graphic designs, and have highly recognizable styles in their tattoos. In other words, it seems tattoos are actually meeting the requirements for copyright protection as being original works.

However, if copyright protection is granted for tattoos, how far should this protection extend? Should a tattooist be able to prevent the person on whose body the tattoo is depicted, from showing it in public, and from being photographed or recorded? Or should it only extend to the prohibition of using the tattoo in a commercial context?

Already we have seen examples of legal actions within this area. In 2011 an American tattoo artist, Mr. Whitmill, filed charges against Warner Bros. Entertainment Inc. claiming copyright for the commercial use of the tattoo on Mike Tyson’s face.  Mr. Whitmill claimed that the producers of the movie The Hangover II pirated his design in the film and in their advertising material, as one of the characters in the movie, during a heavy night out, got a tattoo identical to that of Mike Tyson. Mr. Whitmill filed for monetary damages and a preliminary injunction preventing the release of the film.

Also in the EU we have examples of tattoo artists claiming copyright. In 2005 a UK tattooist Louis Molloy threatened to sue David Beckham after he started a commercial campaign that focused on his tattoo depicting a guardian angel that Molloy had designed for Beckham.

As none of these cases were settled in court, there is no clear answer as to how far the copyright extends in relation to tattoos. It is therefore an interesting discussion, as it seems that tattoos are recognized as works that can be entitled to copyright protection. However, does this mean that people with tattoos, especially celebrities should go around hiding their tattoos making sure that they are not photographed and thereby “copied” as within the meaning of the copyright laws? In reality this means that getting ink under your skin could take you to court.

One might argue, that when a tattooist applies a work of art to a visible part of a person’s body, it must be somewhat implied, that this tattoo becomes a part of this person and his/her identity. Therefore, shouldn’t a tattooist just accept the fact that a part of tattooing people involves this tattoo being seen in public, especially if it is placed in an area not covered by clothes? And even more if it is depicted on the body of a celebrity.

Moreover let’s not forget the fact, that celebs are a great advertiser for their tattooists. Louis Molloy has after his design of David Beckham’s tattoos gained huge success, and he now has his name on the LouMolloy Men’s Fashion collection.

Tattoos are growing in popularity, and it is becoming more and more common to have tattoos, also in visible areas. Celebrities are also showing more and more tattoos, for example artists as Rihanna, Medina, Adam Levine, Kate Moss and Angelina Jolie have several tattoos in visible areas and are often showing them off. They risk ending up in court, if using these tattoos in a commercial context.

According to another IP-blog, “The IPKat”, there are rumors that the NFL Players Association in the US has started advising their agents to make players aware that they should get a release from their tattooist stating who owns the copyright over the tattoo.

Based on this development with tattoos and copyright, we will probably in future see more and more of such copyright disputes. It will be very interesting to see where the courts will draw the line in defining the scope of protection for tattoos, even though it may seem odd that the courts are the place to settle what should be recognized as art.

This writer wonders whether the development seen within the area of body art will develop even further. What if the next thing will be that a plastic surgeon will claim copyright over body sculpturing of a person appearing in a movie or in public and getting attention based on his/her body?

So watch out – getting a tattoo could make you end up in court!

Maria Dam Jensen, Associate

The dark side of the Internet

On Friday the 14 June 2013 we participated in a seminar arranged by the Danish PTO in corporation with the Confederation of Danish Industry on the topic “IP infringements online”.

The seminar aimed at discussing how to protect against infringement of one’s IP-rights on the Internet, and moreover a discussion of counterfeit, its extent and the seriousness about being aware of it. Several interesting speakers gave their view on the different issues under this topic.

The first speaker was David Shore, Director of Global Security EMEA at Pfizer. He gave a very interesting speak on counterfeit in relation to medicines, and the danger and consequences of buying such. He gave several examples from Pfizer, and their strategy in discovering and unraveling of some parts of the major counterfeit business within medicines.

Nikolai Bisgaard from GNResound also shared his experiences as Vice President of IPR & Industry Relations. He described a specific case, where GN Resound discovered that someone was copying one of their products. The case ended with court proceedings in China, and Nikolai Bisgaard explained the many challenges and immense formalities faced by GN Resound in the process of this lawsuit. Moreover he highlighted the importance of registering trademark rights in all countries where these are used, as trademark rights are “easier” to defend, as there is well developed practice within the trademark area in contrast to the unregulated Internet.

Erling Vestergaard, Vice Public Prosecutor, also gave a speak on the criminal fight against IP infringements on the Internet. He explained about the scanty practice within this area in Denmark. He only highlighted copyright cases, as this is the only area within IP where Denmark actually has practice regarding IP infringements on the Internet. He stressed the fact that the Danish legislation is not accommodated to the Internet. According to Mr. Vestergaard our laws have simply not developed in pace with the Internet and the extent of it.

What stood out as a main point from this seminar was that the global reach, openness, versatility and unregulated character of the Internet creates both a great place for marketing and easy access to consumers, but it also creates an obvious place for trademark abuse. In other words, the Internet has a very dark side as well. The non-material damage an infringement can cause a trademark is often much worse than the loss in turnover. Sale of counterfeit goods under a trademark can lead to the dilution of this through a false association of the trademark and goods not originating from the owner of this trademark. Therefore is it crucial to protect these rights.

There were several questions from the attendees. One of the start-up companies asked David Shore and Nikolai Bisgaard as being representatives from established companies, what they would recommend in order to prevent infringements on the Internet. Without any doubt the speakers answered that registered trademark rights formed the best basis to prevent infringements. 

Based on our experience, we fully agree with the reply from the speakers and therefore take this opportunity to stress the importance of having registered trademark rights in all the countries where you intend to use your trademarks. This gives you a right that is recognized, and a right which can be enforced. Moreover, we at Awapatent can assist you in navigating through this complex web of rules, and by forming an online trademark protection strategy. We can assist you in monitoring and surveilling your trademarks through our knowledge and access to specialized online trademark monitoring services.

As something new Awapatent also offers registration and monitoring of trademarks in Trademark Clearinghouse in relation to the new top level domains (TLD). Read more about this service here.

Henriette Vængesgaard Rasch, Attorney at law

Maria Dam Jensen, Associate

Beer lovers sue for trademark dilution

Trademarks are, among other things, a guarantee for a certain level of quality. If the quality slips, the consumers may go for a different, competing product. But sometimes consumers seem to stick to their favorites.

An unusual lawsuit has been filed in the US, where consumers have filed a $5 million class action against Anheuser-Busch. The lawsuit involves 10 Anheuser-Busch products, one of them being Budweiser. The consumers accuse Anheuser-Busch of cheating them of alcohol content as stated on the labels of the bottles. Moreover, the lawsuit accuses the company of diluting their beer to boost their profit margins. Therefore, unspecified compensatory damages are sought for anyone in the United States who has bought Budweiser products in the last 5 years.

Strangely enough the lawsuit is not based on the consumers discovering a difference in taste, but on information from former employees of breweries owned by Anheuser-Busch. According to former employees the company allegedly, as a matter of common corporate practice, water down all of their products mentioned in the lawsuit.

One of the California plaintiffs says she bought a six-pack of Budweiser every week for the past four years, and says she feels cheated. One might wonder why she didn’t taste the difference in just one of those 1248 bottles of Budweiser she apparently bought over the years.

Anheuser-Busch calls these allegations completely false, and states that their beers are in complete compliance with labeling laws, and that they proudly adhere to the highest standards in their brewing process.

What is interesting in this case is that usually the dilution of a trademark is caused when a later similar mark leads to dispersion of the earlier mark by making it less distinctive or unique. Therefore the holder of a well-known trademark is allowed to oppose to later applications which would be detrimental to the distinctive character of his earlier mark. However, in this case the action based on dilution of the trademark is brought by consumers. This is rather unusual, and it will be interesting to follow the case.

Finally it will also be interesting to see whether the European consumers will act equivalent to the Americans, especially bearing in mind their relationship with beer. Even though class actions are rather rare within the EU, it is not as if the consumers lack the opportunity of filing such these days. Both the peculiar taste of Black Beauty in beef lasagna and now the watered down beer might also encourage European consumers to bring action against large companies.

Maria Dam Jensen, Associate