Court upholds exclusive right to football league trademark

In Foreningen af Fodbold Divisionsklubber I Danmark (Divisionsforeningen) v Danske Spil A/S (Case V-79-11, April 19 2013), the Maritime and Commercial Court has found that Danske Spil A/S had infringed the trademark SUPERLIGA, which is owned by the Danish Association of Football League Clubs.

The court had to consider:

• whether a trademark registration for SUPERLIGA was valid or should be cancelled; and
• whether Danske Spil had been unjustified in marketing an online football manager game under the designation 'Oddset Superliga Manager'.

The plaintiff, the Association of Football League Clubs, is the owner of Danish trademark SUPERLIGA (Registration VR 2001 000163).

The association was established in 1979 and its members include the football clubs that are taking part in the Danish Superliga at any one time. Among other things, the association plans and arranges football tournaments in Denmark and takes care of sponsorships and the sale of rights. It undertakes this business together with a company named Superligaen A/S, which was established in 1990. Superligaen is owned by those clubs that participate in the first tier of the Superliga.

Danske Spil is a government-owned company that offers a number of lotteries, scratch cards and sports games. It provides four different manager games related to sports teams - for the Superliga, the English Premier League, the US National Football League and World Men's Handball.

The game concerned in this case was a free online football manager game offered by Danske Spil called Oddset Superliga Manager, in which a player could 'buy' football players with virtual money and manage his or her own football team.

The plaintiff had been using the designation SUPERLIGA in public from approximately 1990 or 1991 in various connections.

Danske Spil contended that the designation was without distinctive character and was an ordinary word.

The court found that the word 'superliga' was fundamentally a noun and an ordinary word, meaning "the best tier within a branch of sport". However, the court found that use of the designation SUPERLIGA by the plaintiff from at least 2010 implied that it had obtained the sole right to use the designation.

Furthermore, the court found that there was a narrow connection between the arrangement of a physical football tournament and sale of a football manager game; consequently, the goods or services were identical. The court therefore held that Danske Spil had violated the plaintiff's trademark rights.

Questions of compensation, damages and costs will be determined in a later continuation of the matter.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen