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Not ‘Under my umbrella’

September 2011 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

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Trademarks
Two insurance businesses could each have an umbrella in their trademark. There was no reason to fear that consumers would confuse the two trademarks.
In the determination of whether a device mark infringes another device mark, weight will be given to the parts of the mark that are most prominent. In this case, two insurance businesses fought to secure the rights to have an umbrella in their trademark. The fight found its winner in the Copenhagen Maritime and Commercial Court.
A US insurance company registered an umbrella as a device mark for the classes ‘insurance activities’ and ‘financial services’ with the Danish Patent and Trademark Office.
Eight years later, a Danish insurance broker applied to register a blue device mark for the same classes. The device mark also included an umbrella. But as opposed to the US logo, the umbrella was placed in a blue square together with the broker’s trade name.
The US company filed an opposition to the application. On an overall examination, however, the Danish Patent and Trademark Office reached the conclusion that there was no risk of confusion between the two device marks although the umbrella formed a dominant part of both marks.
Copenhagen Maritime and Commercial Court
The US company went to the Copenhagen Maritime and Commercial Court, arguing that the blue square only served to frame the mark. So, since the marks were meant for use for the same type of services, the Danish broker’s mark had to be infringing.
The Danish Patent and Trademark Office had agreed that the trademarks contained the same motif, but had held that the two device marks were sufficiently distinctive because of the blue square together with the trade name.
The Copenhagen Maritime and Commercial Court noted that Danish law does not generally protect motifs. Even though the two umbrellas looked very much alike, the Danish broker's device mark was to be assessed as a complete visual image. Therefore, the Court agreed with the Danish Patent and Trademark Office that there was no risk that consumers would confuse the two trademarks.
Accordingly, the Court dismissed the appeal and upheld the Danish Patent and Trademark Office’s decision.
 
Norrbom Vinding notes:
  • that the case confirms that two device marks will not necessarily be confused simply because they are built around the same principal motif.
The above does not constitute legal advice and should not be relied upon as such

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