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
