Legal background Facts Decisions Comment

Although legislation treats personal names and trademarks equally, the criteria for what constitutes good marketing practice is often more generous for personal names. Cases concerning personal names often make the headlines in the Danish media, as the general public has strong opinions on the issue. One example of this is a recent Supreme Court case, which explored the right of individuals to use their own names.

Legal background

Trademark owners are entitled to prevent others from using the same or a similar mark for identical or similar goods and services. That said, anyone can brand themselves under their own name, regardless of whether the name is identical or similar to an existing trademark, on the condition that such use complies with good marketing practice. Therefore, in theory, names are treated in the same way as trademarks when used commercially.

Danish case law regarding personal names has evolved over the past 10 years. In 2008 the Supreme Court held that Louise Lego could name her art gallery Galleri Lego, as this was considered to be a different industry to the toy industry in which LEGO operated. Conversely, in 2014 the Supreme Court ruled that Jacob Jensen could not include his surname in the name of his restaurant and planned chain of restaurants, as it was considered to be confusingly similar to the existing trademark JENSENS BØFHUS, which is a well-known steakhouse chain.

Facts

In December 2016 the Supreme Court issued its decision in a case between Danish company Topbrands and designer Benedikte Utzon. This case differs to the above cases as it revolved around an individual's right to use her full name (and not just her surname).

Utzon had designed, marketed and sold clothing under her own name for several years. She built her entire business on her name and was at one point paid to transfer all of her IP rights to the company Benedikte Utzon A/S. Due to various circumstances, Utzon filed for bankruptcy in 2012. The liquidator offered her the trademark rights to her own name, but she did not have the finances to purchase them.

Topbrands bought the main part of the bankruptcy assets, including the unregistered rights to the trademark BENEDIKTE UTZON, which it subsequently registered in the European Union. Since 2012, it has sold clothing under the Benedikte Utzon brand.

Following the bankruptcy, Utzon began designing and selling clothes again, this time under the name 'Est 1995 BENEDIKTE UTZON wardrobe'. She also established the brand 'My little curvy love', which was accompanied by the tagline 'by Benedikte Utzon'. Further, she continued to use her own name on various social media platforms.

Topbrands filed a claim against Utzon for trademark infringement.

Decisions

Topbrands won in the first instance, as the court considered that Utzon had lost the right to use her name commercially and had thus infringed Topbrands' rights.

The Supreme Court upheld the decision and increased the amount of damages and costs that Utzon had to pay Topbrands.

In its decision, the Supreme Court stated that the term 'good marketing practice' entails that the commercial use of an individual's own name must be done in a way that is not unfair, improper or damaging to the rights holder. Further, the court stated that where a person has used his or her own name as a trademark and assigned the trademark to a third party, the principle of good marketing practice entails that he or she is then prevented from using the name as a trademark for goods or services similar to those for which the trademark was registered.

Further, the court referred to the legislation's preparatory works, from which it follows that if a business owner has used his or her own name as a trademark in such a way that it appears to the public to be a trademark rather than a personal name, and then assigns the trademark to a third party with no reservations as to the future use of the name, the business owner is precluded from using his or her own name as a trademark for goods or services similar to those covered by the trademark.

Therefore, when Utzon assigned all of her IP rights to Benedikte Utzon A/S in 2009, she separated the BENEDIKTE UTZON trademark from her personal name.

In addition, both courts agreed that Topbrands' use of the BENEDIKTE UTZON trademark was not misleading to consumers.

With this decision, Utzon was banned from using her full name in connection with her work as a designer or with selling clothing and accessories, as well as when giving speeches regarding her life as a designer or in her job as a teacher at a Danish design school.

Following the decision, Utzon changed her name to Dicte Utzon and has declared 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 in her work as a designer.

Comment

The reasoning behind this decision is clear and has been confirmed by two instances. Although case law is often more generous with regard to brands consisting of personal names, the use of such names must be in line with good marketing practices. If a personal name appears to the public to be a trademark and is assigned to a third party, the person loses the right to use his or her own name commercially. If the person continues such use, he or she may be infringing the trademark rights of others.

For further information on this topic please contact Maria Dam Jensen or Anette Rasmussen at Awapatent A/S? by telephone (+45 43 99 55 11) or email (maria.dam.jensen@awapatent.com or anette.rasmussen@awapatent.com). The Awapatent A/S? website can be accessed at www.awapatent.com.

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