Court considers use of trading partner's trademark as AdWord

In SKA-DAN v Bredenoord A/S (Case V-52-11, October 24 2012), the Danish Maritime and Commercial Court has held that Bredenoord A/S' use of the trademark SKA-DAN as a Google AdWord was contrary to the Danish Marketing Practices Act.

From March 2010 to April 2011, SKA-DAN, a Danish company engaged in the leasing of dehumidifiers, damp measuring tools and generators entered into a lease agreement with Dutch company Bredenoord, whose line of business was the production and lease of generators. By way of agreement, SKA-DAN rented a variety of generators belonging to Bredenoord for the purpose of leasing the said generators to its own customers.

When conducting an internet search of its firm name in November 2010, SKA-DAN discovered that an advertisement for Bredenoord appeared as the second search result in Google with a link to Bredenoord's website - that is, Bredenoord had used SKA-DAN's trademark as an AdWord in Google's search engine. As a consequence, SKA-DAN immediately terminated the agreement and sued Bredenoord for infringement of its rights under the Danish Trademarks Act and the Marketing Practices Act. During the trial hearing, SKA-DAN waived its allegation regarding Bredenoord's infringement of the Trademarks Act.

During the witness statements, it was revealed that Bredenoord's intention when using the SKA-DAN mark as an AdWord on Google was to gain a foothold in the Danish market, where SKA-DAN had a significantly better position than Bredenoord.   

The Maritime and Commercial Court ruled that Bredenoord's conduct was contrary to Section 1 (disloyal conduct) and Section 18 (illegal use of a trademark/business identifier) of the Marketing Practices Act. In this respect, the Maritime and Commercial Court attached importance to:

• the existence of a cooperative relationship between the parties; and
• the fact that Bredenoord had attempted to acquire SKA-DAN's customers by using the SKA-DAN mark as an AdWord.

The court also stated that Bredenoord's marketing activities were not intended to promote the partnership with SKA-DAN but, rather, to generate more business for itself, as it had been doing business in Denmark for a relatively short period of time. 

Bredenoord was ordered to pay a small remuneration of Dkr5,000 for the unauthorised use of SKA-DAN's trademark as an AdWord. The reason for such a small amount is that there had been only a very limited number of references to SKA-DAN (nine references) leading to the advertisement for Bredenoord. 

During the closing statements, Bredenoord's lawyer attached importance to the fact that SKA-DAN's trademark did not appear in Bredenoord's advertisement on Google. It should be noted that, according to the case law of the Court of Justice of the European Union, the fact that a trademark appears in an advertisement is not a condition for infringement. This was also confirmed in Case V-0101-08 (November 17 2010) between Billedbutikken and Pixelpartner, in which the Danish Maritime and Commercial Court found that Pixelpartner's use of the keyword 'Billedbutikken' was contrary to both Section 4 (the substance of trademark rights) of the Trademarks Act and Sections 1 and 18 of the Marketing Practices Act.

Nina Ringen, Plesner, Copenhagen