Hasbro wins battle in robot war

In Hasbro Europe v VN Legetøj A/S (Case V-107-07, August 3 2009), the Maritime and Commercial Court has ruled that use of the trademark TRANSFORMAX for toys infringed Hasbro Europe's rights in the TRANSFORMERS mark.
International toy group Hasbro has owned the Community trademark TRANSFORMERS since 1996. It has also owned Danish registrations for the trademarks THE TRANSFORMERS and AUTOBOT since 1987.
In 2007 Danish toy wholesaler VN Legetøj A/S distributed a catalogue containing toys under the name Transformax. Legetøj also exported toys to Norway under the designation X-Bot-Transformable. Furthermore, Legetøj used packaging in colours similar to those used by Hasbro.
Hasbro sued Legetøj for infringement of its rights under the Trademarks Act and the Marketing Act.
First, the court held that the marks TRANSFORMERS and TRANSFORMAX contained three syllables, of which the first two ('trans' and 'form') were identical. The marks differed from each other only by their endings ('ers' and 'ax'), which may have been difficult to hear when the marks were pronounced. The visual and phonetic similarities between the marks might also have led to confusion, particularly when the marks were being recalled, since they were used for identical products.
In addition, the court held that both marks were written in characteristic big, square letters, both containing an 'A' where the transverse line was at the bottom instead of in the middle and did not close the letter. Thus, the court ruled that Legetøj had violated Section 4(1) of the Trademarks Act, Article 9(1)(b) of the EU Trademarks Directive (2008/95/EC) and Sections 1 and 18 of the Marketing Act.
With regard to the trademarks AUTOBOT and X-BOT-TRANSFORMABLE, the court found Hasbro's trademark to have distinctive character, but ruled that the two marks were not confusingly similar. The trademarks did not look similar visually or phonetically, and the syllable 'bot', which derived from 'robot', was an ordinary suffix relating to robots. Thus, Legetøj's use of the mark X-BOT-TRANSFORMABLE did not constitute trademark infringement.
However, the packaging in which the X-Bot-Transformable product was marketed, including the choice of colours and the use of a mask as a sign, might have led consumers to think of Hasbro's Autobot product. Following a general assessment, the court found that use of the packaging violated Sections 1 and 18 of the Marketing Act.
Legetøj was thus ordered to pay Dkr100,000 in reasonable compensation and Dkr150,000 for disturbance of market and lost sales.
Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen

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