Court finds no risk of confusion in dispute over sale of new and used boats

In Tempo Bådsalg v JP Politikens Hus A/S (Case V-10-12), the Maritime and Commercial Court has found in favour of defendant JP Politikens Hus A/S, ruling that the parties used the word ‘Tempo’ for very different goods.

Since 1989 Tempo Bådsalg has performed business as an agent selling second-hand boats for persons in Denmark and for finance companies in connection with non-performing loans. The boats were marketed via a homepage (www.tempobådsalg.dk) and via electronic and printed media (eg, the magazine Tempo® Bådsalg, which was distributed at a boat show in 2013). In addition, the designation ‘Tempo’ had been used since 1989 as a business name.

In 2009 TEMPO was registered as a trademark (VR 200901594) in a number of classes, including Class 35 of the Nice Classification, which covers "[the] collection (not transportation) of a selection of goods such that others obtain the possibility to - in an easy way - to see and buy these goods, viz sale of new and used boats".

Politikens is a major Danish newspaper. In 2011 it introduced a new magazine under the name Tempo, which it published as a supplement to the newspaper every Friday. The magazine covered subjects such as sports, cars, boats, electronics and gear. Among other things, the magazine contained articles concerning used boats and a boat register in which businesses and persons could insert classified advertisements concerning boats.

Tempo sued Politikens, claiming that it must cease including classified advertisements for the sale of new and used boats in the magazine.

In a June 10 2013 decision the Maritime and Commercial Court found in favour of Politiken. The court ascertained that the trademarks were identical, and that the plaintiff's trademark was registered for Class 35, among others. However, the court found that Tempo and Politikens used the word ‘Tempo’ for two widely different goods:

• Tempo used it in connection with the advertisement of boats for sale; and
• Politikens used it for a lifestyle magazine.

The fact that the magazine contained classified advertisements under the heading "The Boat Register" could not result in Politikens being deemed to have arranged the buying and selling of boats, as it was not the magazine that offered the boats for sale. The court thus found that the designation was not used for the same or similar goods, and consequently there was no risk of confusion and no reason to presume that Politikens’ use of the designation ‘Tempo’ constituted a connection to the registered trademark.

Furthermore, the court found that Politikens had not acted in bad faith, and that there was no risk that Tempo's reputation would suffer by Politikens’ use of the designation ‘Tempo’ for its boat magazine. Thus, no violation of the Act on Marketing existed.

Tempo was ordered to pay Dkr30,000 as costs.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen