FISHERMAN for vodka is no friend of FISHERMAN for lozenge

In Nortlander A/S v Lofthouse of Fleetwood Ltd (Case 268/2004, April 24 2007), the Supreme Court has held that the use of the name Fisherman for vodka shots infringed the mark FISHERMAN'S FRIEND for lozenges.

Since 1977 Lofthouse of Fleetwood Ltd has marketed lozenges on the Danish market under the designation 'Fisherman's Friend' and had obtained trademark registration of LOFTHOUSE ORIGINAL FISHERMAN'S FRIEND as a word mark for pharmaceutical products. In 1989 the word mark FISHERMAN'S FRIEND was registered for non-pharmaceutical confectionery. In 2001 Nortlander A/S began to produce and market vodka shots with a liquorice and menthol flavour under the name Fisherman, with a label in red, white and black showing a picture of a fisherman.

Lofthouse claimed that Nortlander should be prohibited from manufacturing and marketing drinks under the Fisherman name and prohibited from using these labels. It also contended that Nortlander should pay a fee for the use of the trademark and compensation for further damage implied by the trademark violation.

The Supreme Court stated that it has become the norm for some brands and flavours of vodka shots to refer to a certain sweet or lozenge, as is the case for Nortlander's Spunk and Ga-Jol vodka shots. In light of this, and as the court considered the word 'fisherman' to be the dominant element in the trademark FISHERMAN'S FRIEND, it could be assumed that a large number of consumers would connect Nortlander's Fisherman vodka shots with Lofthouse's Fisherman's Friend lozenges. In addition, Nortlander's use of the word could be harmful to Lofthouse by connecting the lozenge, which has often been marketed in connection with sport, to spirits. Therefore, the court held that Lofthouse could stop Nortlander's use of the word 'fisherman' for vodka shots and in connection with the sale of spirits. In addition, the court ordered Nortlander to pay Dkr500,000 to Lofthouse for the use of the trademark and compensation for damages to the market.

Mads Marstrand-Jorgensen, Norsker & Co, Denmark