Danish designer barred from using own name as trademark

In Insights, Uncategorized

22 December, 2016

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

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