In Trademarks, Connections are not Always Enough

In Insights, Uncategorized

18 March, 2013

The Prelature of the Holy Cross and Opus Dei is the impressive name of an organisation most of us only know as Opus Dei through the Dan Brown novel The Da Vinci Code. Here it was portrayed as a sinister conspirational organisation but the reality is far less conspicuous and commercial.

Opus Dei has recently been involved in a rather unusual and secular trademark dispute in Denmark.

The name OPUS DEI – meaning the work of God – is a registered trademark, and Opus Dei – as any diligent rights’ owner – are monitoring any new applications that may be confusingly similar.

A Danish developer of board games had conceived the idea for a new game where the players get tasks within religion or philosophy. The game was called Opus Dei: Existence ofter Religion. As part of the marketing the developer also registered Internet domains in Denmark and the UK.

Opus Dei, having a registered Community trademark, contacted the developer and requested that he ceased with using the name, transferred the domains and paid a large compensation. And from then on the case escalated.

As in all trademark disputes there are a number of hoops the court need to take into consideration: is Opus Dei a concept (i.e. does the ordinary consumer know and recognize it as such?), does it have trademark protection and for what, does the other trademark constitute an identical or confusingly similar mark – and will consumers think so? In this matter the trademarks are identical. This generally means that the goods and services need to be distinctively apart.

Friday last week the Maritime- and Commercial Court in Copenhagen passed its ruling: There is no risk of confusion as the “goods” offered by the parties – the Danish games developer and the Catholic organization – are distinctly different, even though the marks are identical.

In a case such as this one it shows that the legal test for protection and extension of the protection is absolutely secular. It also shows the weaknesses of having a broadly formulated list of goods for your trademarks. OPUS DEI is registered i.a. for goods made of paper, cardboard, printed material, educational material and playing cards in one of the classes. There is little doubt that Opus Dei could have had far better protection – but overall, the rationale from the court is correct: for any trademark to have enhanced protection it will take quite a lot. Also note, that Opus Dei probably have a massive problem in as much as the playing cards mentioned in the trademark registration are not commercially exploited. This means that the mark is vulnerable to extinction for this product due to non use.

An interesting case and a case with a lot of teachings both for applicants and owners of rights, be it commercial or sacred.

Thorbjørn Swanstrøm, Attorney at Law

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