Court finds no similarity between OPUS DEI trademarks

In Prelatura Del Opus Dei Region de España v Dema Games ApS (V-85-10, March 15 2013), the Maritime and Commercial Court has considered whether Dema Games ApS' use of the designation 'Opus-Dei: Existence After Religion' implied a violation of the Prelatura Del Opus Dei Region de España's right to use the designation OPUS DEI. The court also examined whether the prelature's Community trademark (CTM) registration was invalid or should be invalidated due to non-use of the trademark.

The prelature had owned a CTM registration (000844860) since 1998 for the word mark OPUS DEI in Classes 16, 38, 41 and 42 of the Nice Classification. Danish company Dema had registered Danish trademark VR 2009 00158 for a game in Classes 16 and 28 for a logo mark that included the words 'Opus-Dei: Existence After Religion'.

The prelature claimed that Dema should:

• delete this registration;
• be prohibited from using the designation; and
• transfer the domain names 'opus-dei.co.uk' and 'opus-dei.dk' to the prelature.

In turn, Dema claimed that the prelature's CTM registration was invalid, or that it should be invalidated for those goods and services for which the prelature could not prove that it had used the trademark within the European Union.

The court found that the trademark OPUS DEI had sufficient distinctive character for those goods and services covered by the registration. It held that Dema had an insufficient cause of action in relation to the question of whether the prelature had made sufficient use concerning Classes 38 and 42 - according to the court, it was unthinkable that Demas' goods in Class 28 could be considered identical to those services covered by Classes 38 and 42.

The court also found that the prelature had fulfilled its duty to use its trademark in relation to religious education and the organisation and leadership of religious meetings in Class 41. However, as the prelature had not produced evidence that it had published educational material under the trademark, the duty to use the mark was not fulfilled in relation to educational material. Furthermore, the prelature failed to prove that the trademark had been used for other goods and services in Classes 16 and 41. The court therefore ascertained that the CTM registration must be invalidated for Class 16, and in Class 41 be limited to 'religious education' and the 'organisation and leadership of religious meetings' only.

The court found no proof that OPUS DEI could be considered a well-known trademark in Denmark. In addition it found that the trademarks of the prelature and Dema were confusingly similar. However, the court found that there was no similarity in the goods to which the trademarks applied - Dema offered games, which (following the limitations above) were in no way confusingly similar to those services covered by the prelature's trademark registration. Consequently, Dema's trademark registration was upheld and Dema's use permitted.

Although the designation OPUS DEI had been used for a number of years as a name for the prelature's organisation, the court did not find that this prevented the registration of Dema's trademarks under Section 14(4) of the Act on Trademarks, as there was no similarity of goods. Furthermore, the court found that Section 18 of the Act on Marketing did not give the prelature's trademark and name "a separate protection which reaches beyond that which already follows from the Act on Trademarks" (Section 18 states that "businesses are not permitted to use distinctive marks etc which do not belong to them in a way which is suited to cause confusion with others").

The court stated that it had no authority to consider the UK domain name. It found that Dema's use of the domain name 'www.opus-dei.dk' to market its game did not contradict Section 12 of the Act on Domain Names.

The judgment raised two important points. First, the court failed to find that the trademark OPUS DEI was well known in Denmark. Considering that more than 360,000 copies of Dan Brown's book The Da Vinci Code, which contains extensive references to Opus Dei, have been sold in Denmark and that the film The Da Vinci Mystery has been viewed by many Danish citizens (with 625,000 tickets sold in 2006 alone), the trademark could be argued to be very well known in Denmark. However, it is unclear whether these figures were disclosed to the court.

The court's reasoning on this point is arguably a little odd - it stated that "there is no reason to ascertain that readers in general will connect Opus Dei with the prelature" as:

"just under 10 years have passed since the publication of the book and seven years since the film of the same name. The coverage which appeared of the prelature in Danish media in that connection and which undoubtedly led to a greater part of the public obtaining knowledge of the prelature under the name Opus Dei, is not sufficient documentation that OPUS DEI may today be considered a well-known trademark in Denmark." 

Second, it is unclear why the court limited the protection given to business names by Section 18 of the Act on Marketing. This seems contradictory to previous prevailing practice, under which the courts have given increased protection to company names.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen