Danish term meaning 'yellow pages' not distinctive

In TDC Forlag A/S v Medieforlaget Danmark A/S (Case 337/2001), the Danish Supreme Court has ordered the cancellation of the mark FAGBOG (meaning 'yellow pages'). The court overturned a decision of the Maritime and Commercial Court and held that the word is a common expression.

TDC Forlag A/S operates, among other things, a business directory service at its website hosted at 'fagbogdanmark.dk'. It registered the company name Fagbog A/S in 1995 and obtained a trademark registration for the mark FAGBOG TDC on January 24 2000. Medieforlaget Danmark A/S, a publishing company, was established in 1997. It runs a subsidiary under the name IT-Fagbogen ApS that also provides business directory services on the Internet.

TDC Forlag filed an action against Medieforlaget. On July 29 1999 the Maritime Commercial Court issued an interim injunction preventing Medieforlaget's use of (i) the domain name 'ITFagbogen.dk' for its business directory and (ii) the subsidiary name IT-Fagbogen ApS. Medieforlaget appealed to the Supreme Court.

Medieforlaget argued that FAGBOG was not distinctive as it is a common expression.
TDC Forlag responded that FAGBOG was protected as follows:

• as a trademark under Section 3 of the Trademark Act;
  
  
• as a trade name under Sections 1 and 5 of the Marketing Practices Act; and
  
  
• as a company name under both Section 2 of the Private Limited Companies Act and Section 153 of the Public Limited Companies Act.

The Supreme Court overturned the decision of the Maritime and Commercial Court, and upheld Medieforlaget's appeal. It stated that FAGBOG is a common expression and the question of whether TDC Forlag had obtained rights in the mark depended on whether it had obtained sufficient distinctiveness through use. However, the court held that this was not the case.

Consequently, the court held that the FAGBOG registration was unlawful and should be cancelled. As a result, Medieforlaget had not infringed any trademark rights and had not violated the Marketing Practices Act or the aforementioned company acts.

The court awarded damages of Dkr245,000.

Mads Marstrand-Jorgensen, Norsker & Jacoby, Copenhagen