Pandora wins dispute over the word “joy”
Over the years, the Danish jewelry company Pandora has grown to an impressive size.
Pandora gained most of their popularity when they started selling charms - small pendants for bracelets, which can be bought separately and combined as desired by the buyer.
In 2013 Pandora introduced a new chapter of their charms story, when the “Essence Collection” was presented. The collection consists of 24 charms, each representing a personal value, such as “passion”, “love” and “balance”.
Among the 24 charms is “joy” - a charm, which symbolizes happiness. The charm is a small silver ball with the word “joy” imprinted on the side. The charm is sold - together with the 23 other charms - on the Pandora web shop and in flagship stores around the world.
The sale of the “joy”-charm has not, however, been as easy as planned. In November 2013 Pandora was contacted by the English jewelry company P.J. Watson, who has a registered trademark to the word “joy” for all jewelry. P.J. Watson demanded that Pandora terminated all use of their trademark, as Pandora’s use of the word “joy” was an infringement of the registered right.
Pandora did not agree. In stead they argued that the P.J. Watson trademark should be cancelled, as P.J. Watson had failed to genuinely use the trademark as required by the trademark rules. Pandora believed that the trademark therefore had lost its protection.
The dispute between the parties continued, and while Pandora requested a cancellation of P.J. Watson’s trademark with the international office for trademarks, P.J. Watson started a case before the Danish Maritime and Commercial Court to get an injunction. 5 months later, the case has now come to an end.
The Danish Maritime and Commercial Court were to decide if P.J. Watson had actually used the registered trademark enough to still have a right to claim. Furthermore, the court were to decide if an injunction was possible.
The former was answered affirmative, as the court believed that P.J. Watson had in fact used the trademark “joy” in the relevant period - even though it had only been to a certain extent. The trademark registration was thus still valid.
The court did not, however, find an injunction justified. The decision was mostly based on the fact that the two companies offered very different products, which - because of the differences in prices and marketing channels - was directed at different customers.
Furthermore, P.J. Watson’s limited use of the trademark played an important rule - together with the fact that Pandora had succeeded to always use “joy” in connection with the words “Pandora” or “Essence Collection”. The court found no risk of confusion between the products.
The conditions for an injunction was thus not present, and P.J. Watson was forced to leave the court room unsatisfied.
During the case it was argued by the Danish goldsmith association that it is very common in the jewelry business to use generic words such as “love” and “joy” to characterize products, and that this happens without any trademarks being infringed. Pandora stated further that their use of the word “joy” was not in any way a trademark use of the word, but merely a generic use of the word used to describe the value that each charm represents.
This is an interesting angle on trademarks, as this could open up the doors for using words that are trademark protected. But it is a thin line - and the question is how generic a word has to be, before you are able to use it without infringing existing rights? The answer is up to the courts, and it shall be interesting to see which legal path they choose.