NEWSLETTER JUNE 2023

Trademark LAW

  • The EUIPO BoA rule on the requirements for genuine use and distinctiveness for trademarks in a case concerning colour inversion

The Board of Appeal of the EUIPO has recently rendered a decision in a case regarding a figurative mark owned by Hummel consisting of two black chevrons pointing downward on a white background. Barry’s Bootcamp – the cancellation applicant – contested the trademark on the grounds that the trademark was not put to genuine use. EUIPO’s Cancellation Division partially refused this and found that genuine use was proven for goods in classes 18, 25 and 28.

Barry’s Bootcamp appealed the decision, arguing that none of the submitted documents show trademark use in the exact form as registered, i.e., two black downward facing chevrons on a white background – but that the chevrons in a lot of instances were depicted in a white colour on a black background. The cancellation applicant contended that the reversed colour scheme altered the distinctive character of the contested mark. This was supported by the CJEU’s judgment in case T‑307/17 where the Court found that colour inversion of Adidas’ three stripes trademark altered its distinctive character.

The Board found that the use of white downfacing chevrons on a black background did not alter the distinctive character of the contested mark. The Board argued that the distinctiveness of the contested mark is somewhat below average, but not as simple as the Adidas logo. According to the Board, chevrons can be presented in multiple ways, and what characterizes Hummel’s logo is the outline of the two chevrons, their equal thickness and width, and the equal distance between them.

Consequently, the Board of Appeal dismissed the appeal.

The full decision can be read here.  

  • The Eastern High Court: “LEGALTECH DENMARK” is not an infringement of “LEGALTECH”

In a decision on 28. June 2023 the Danish Eastern High Court found that Legaltech ApS could not prohibit Legal IT ApS’ use of the wording “LEGALTECH DENMARK” as a domain name, a business characteristic on their website or in other marketing contexts, despite Legaltech having a trademark registration to “LEGALTECH” in classes 35, 36 and 41 (partially).

Firstly, the Court pointed out that that Danish Patent and Trademark Office had rejected Legaltech’s registration of “LEGALTECH” for classes 42, 45 and most of 41, since they found that the wordmark was descriptive for those services. Based thereon, the Court stated that the scope of protection derived from LegalTech’s trademark was narrow. The Court ruled that Legal IT’s use of “LEGALTECH DENMARK” fell outside the scope of protection, as they had only used it for services where the term was descriptive.

Consequently, Legaltech’s claim that Legal IT’s use of “LEGALTECH DENMARK” infringed on their rights under the Danish Trademark Act was rejected.

Secondly, the Court found that Legaltech’s use of “LEGALTECH” was not protected under the Danish Marketing Practices Act, seeing as they had not been able to prove an established commercial activity for the company using the term.

The Eastern High Court upheld the appealed part of the decision from the Danish Maritime and Commercial High Court and Legal IT was acquitted.

The decision can be read in Danish here.

Patent LAW

  • The Danish Maritime and Commercial High Court issues preliminary injunction in a case regarding patent infringement and invalidity

On 15 June 2023, the Danish Maritime and Commercial High Court issued a preliminary injunction against the defendant Viatris’ use, marketing etc. of the medicinal product Fingolimod "Mylan", despite their objections to the validity of the patent-in-suit.

The patent-in-suit was granted by the EPO on 12. October 2022 to the patent proprietor Novartis. The defendant claimed invalidity due to lack of basis and novelty.

The Court ruled in favour of Novartis stating that Viatris had not managed to refute the presumption of validity that comes with registration with the EPO. The Court therefore found that Novartis had proven that Viatris' conduct made a preliminary injunction necessary in accordance with section 413 of the Danish Administration of Justice Act.

The preliminary injunction was issued against a security of DKK 10.000.000.

The decision can be read in Danish here.

  • The Danish Supreme Court rules in case regarding the urgency requirement in preliminary injunction proceedings

On 2. June 2023 the Danish Supreme Court ruled in a case regarding the urgency requirement in preliminary injunction proceedings (periculum in mora).

The plaintiffs – Verner Panton Design and Marianne Panton – had requested the preliminary injunction in order to prohibit the defendant Tagwerc from using terms relating to the Panton-name in their marketing of products in Denmark. The plaintiffs also sought to prohibit the defendant from marketing their company as ‘specialists in Verner Panton products’ in Denmark.

Firstly, the Court stated that one single purchase of the alleged infringing product, purchased by the plaintiffs, was sufficient to establish jurisdiction in Denmark.

Verner Panton and Tagwerc had been corresponding since 2009, including about the alleged infringement and a possible collaboration. However, an action for a preliminary injunction was not filed until 2020. The Eastern High Court therefore concluded that the urgency requirement was not fulfilled. The Danish Supreme Court agreed with the Eastern High Court’s decision and consequently rejected the application for a preliminary injunction.

The Court also rejected the plaintiffs’ claim that ‘passivity’ or ‘acquiescence’ in regard to section 413 of the Danish Administration of Justice Act were to be interpreted in accordance the CJEU’s concept of passivity determined in C-482/09 (Budweiser). The Court noted that the CJEU’s ruling does not pertain to urgency requirement for the grating of preliminary injunctions. 

The decision can be read in Danish here.

Marketing Practices Law

  • DKK 300.000 in damages for infringement of packaging design

On 20 April 2023 the Danish Maritime- and Commercial High Court ruled in a dispute between DBU (the Danish Football Union) and the retailer Power. Both parties claimed that the other party had breached the Danish Marketing Practices Act.

The Court found that statements made by DBU’s commercial director about Power, criticizing their marketing practices and claiming they had many cases pending before the Danish Consumer Ombudsman, did not constitute a breach of the Danish Marketing Practices Act nor the Danish Trademark law. The Court also rejected DBU’s claim that Power’s advertisements infringed DBU's rights under the Danish Marketing Practices Act to the name and brand of the Danish national football team, including the national football jersey.

The judges found that Power’s advertisements did create associations to football and the 2020 European Championship event in general and therefore also some association to the Danish national football team. However, the Court concluded that the association to the Danish national football team was so weak that it did not constitute commercial exploitation of the team or the team’s goodwill.  

The judges also considered that the disputed advertisements were brought in connection with a major national event in the form of the 2020 European Championship, which partially took place in Denmark. The Court found that it is natural for a retail chain such as Power to market itself in connection with major events, just as it usually does during major holidays, such as Christmas.

The decision can be read in full in Danish here.