Deutsche Telekom fails to prevent TeliaSonera's use of colour magenta
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The High Court of Eastern Denmark has dismissed Deutsche Telekom AG's motion for a preliminary injunction preventing TeliaSonera Danmark A/S from using the colour magenta in its name, logo and other marketing material (Case U.2008.2086OE, May 28 2008, only recently released).
In 2000 Deutsche Telekom registered the colour magenta as a Community trademark, despite the fact that the application did not refer to an international colour code or contain other means of identifying the colour precisely. However, Deutsche Telekom subsequently added the colour code RAL 4010 to the registration. Referring to Statement 06/03, which was issued by the president of the Office for Harmonization in the Internal Market (OHIM) on November 10 2003, OHIM stated that the addition was valid.
In 2006 Deutsche Telekom sought a preliminary injunction against TeliaSonera, a Danish telecommunications company, on the grounds that TeliaSonera's use of the colour magenta infringed its Community trademark. At the time of the proceedings, TeliaSonera had used the colours 'Pantone 221' and 'Pantone 227' (magenta) in its marketing material for over six years.
The Maritime and Commercial Court dismissed Deutsche Telekom’s motion for a preliminary injunction on the grounds that the general requirements had not been met. According to the court, Deutsche Telekom knew or ought to have known of TeliaSonera’s use of the colour magenta before the commencement of the proceedings, but had failed to react. Deutsche Telekom appealed to the High Court of Eastern Denmark.
On appeal, TeliaSonera submitted the following arguments, among others:
- The trademark was invalid at the time of registration because:
- it failed to meet the absolute requirements for graphic representation laid down by the European Court of Justice in Libertel (C-104/01); and
- Deutsche Telekom’s subsequent addition of the colour code constituted an unauthorized change of the registration;
- The trademark was invalid because, at the time of registration, it had not acquired a secondary meaning in more than one member state of the European Union;
- TeliaSonera did not use the colour magenta as a trademark, but as a visual identity marker for the company; and
- The general conditions for issuing a preliminary injunction were not met.
The court upheld the first instance decision on the following grounds:
- The following elements remained in doubt:
- the exact colour covered by the Community trademark; and
- whether the addition of the colour code after the registration was permissible;
- There were lapses in TeliaSonera’s use of the colour magenta; and
- Deutsche Telekom’s interest in having the injunction issued did not outweigh the potential harm to TeliaSonera.
TeliaSonera was awarded Dkr1.5 million (€201,000) in legal fees - a significant amount in light of the legal fees usually awarded by the Danish courts.
Janne Glæsel and Eva Bang-Olsen, Gorrissen Federspiel Kierkegaard, Copenhagen and Aarhus
Janne Glæsel acted for TeliaSonera in this case
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