Cracks found in glass factory's infringement claim

The Maritime and Commercial Court has issued its decision in Holmegaard v Erik Bagger (Case V-37-07, March 26 2008).

In 1990 Danish glass factory Holmegaard introduced a new glass series under the brand Opera. The glass was marketed from 1990 onwards. In 2004 Erik Bagger introduced a glass series also under the brand Opera, which was a reference to the fact that the glass was designed for and sold to the restaurant in Copenhagen's new opera house. Erik Bagger used different designations for the glasses, including:

• 'designed for the opera';
  
  
• 'the opera glass';
  
  
• 'opera glass';
  
  
• 'the glass series of the opera';
  
  
• 'the Copenhagen opera glass series'; and
  
  
• 'designed for the restaurants of the opera'.

Holmegaard did not own a trademark registration for OPERA. However, when Erik Bagger applied for registration of the mark in August 2004, Holmegaard objected to the application.

The Maritime and Commercial Court found that Holmegaard had successfully proven that it had been using the designation 'Opera' for glass since 1990 and had thus acquired rights in the unregistered trademark OPERA. The court further found that Erik Bagger's use of the designation 'Opera' caused a risk of confusion between the products. The court issued an injunction against Erik Bagger's use of the designation 'the opera glass'. However, it did not find that the designations 'the glass series of the opera' and 'designed for the restaurants of the opera' implied a violation of Holmegaard's trademark rights as they described the creation of the glass.

As Holmegaard had suffered no proven loss, it was awarded no damages. However, Holmegaard was awarded remuneration of DKr125,000 as Erik Bagger had made use of two violating designations. As Holmegaard's interim injunction was also aimed at the designation 'the glass series of the opera', which the court did not find to be in violation, Holmegaard was ordered to pay DKr116,357 to Erik Bagger as compensation for any new packaging expenses. Finally, the court ruled that neither party should pay the other's costs.

Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen