DANISH COMPANY LOSES TRADEMARK DISPUTE TO INTEL
Trademarks can be a complicated affair, as it is possible - in Denmark - to obtain a trademark right through both registration and commencement of use.
As a rule, the scope of protection is limited to the classes, in which the trademark is registered for, or in which the trademark has been used for - but in some cases, the scope of protection is broadened:
If a trademark can be categorized as well-known, the trademark will enjoy protection in all classes – not just the classes in which the mark is registered for or in use for. Whether or not a trademark is well-known depends on how known the mark is amongst the general population.
Intel Corporations is the world’s largest manufacturer of computer chips. The Danish Maritime and Commercial Court recently had to establish whether or not their trademark INTEL enjoys protection as a well-known mark.
The dispute involved the Danish company SeaIntel ApS, who collects and analyzes data concerning container shipping. The question to be answered by the court was, if the INTEL trademark was being infringed by SeaIntel ApS’ name.
SeaIntel ApS argued that the word “Intel” is an abbreviation for the English word “Intelligence”, and that the word was therefore not distinctive enough to be used as a trademark. This was not, however, the court’s opinion, as they found INTEL distinctive enough to act as a trademark.
The court then assessed the competitive conditions between the parties, and whether or not the parties were providing the same services. The INTEL mark was registered in class 39 for “services consisting of information regarding the transport of goods”. SeaIntel ApS had not registered their name, but had – through commencement of use – obtained a trademark right for similar services in class 39. Intel Corporation, however, were not able to provide sufficient proof of use for their mark, and the court therefore denied Intel Corporation any protection on the basis of their trademark registration.
Instead the court found, that INTEL is a well-known mark, and even though the parties were deemed not to be in competition, due to Intel Corporations lack of use in class 39, the INTEL mark was protected against use in all classes because of its well-known status.
A verdict was given, and SeaIntel ApS were permitted from using the trademark SeaIntel and was told to erase their company name SeaIntel ApS and the domain SeaIntel.com, as these were an infringement of Intel Corporations’ trademark rights. Furthermore, SeaIntel ApS was required to pay a remuneration of 20.000 DKK for the infringement.
One might question the expediency of this rule, as it – judging from this case – only seems to favor large companies on the market. The reason behind the rule is, however, the wish to protect the value and reputation of well-known companies, who might otherwise be taken advantage of. As an example, one could imagine a pram manufacturer, who uses the name FERRARI for their prams. By using that name, the manufacturer is taking advantage of the good name and reputation of Ferrari, which may harm Ferrari, as the consumers might believe the two companies are linked in some way. This is the scenario the rules of well-known marks seek to prevent.
The case of SeaIntel ApS v. Intel Corporations shows that it is necessary to tread lightly when dealing with well-known marks, and how badly it can end – even when you think you’ve done your homework. SeaIntel ApS thought the coast was clear for using the SeaIntel-mark, but they turned out to be very wrong.
If you’re unsure of the legality of your company name, or have questions about the use of well-known trademarks, feel free to contact us.
By Mia Storm