JOBTEAMDANMARK falls at Olympic hurdle

In Jobteamdanmark A/S v Trademarks Board of Appeal (Case V-16-06, January 30 2008), the Commercial Court has upheld an opposition filed by the Danish Olympic Committee against the application to register the mark JOBTEAMDANMARK.

The committee, which is part of Denmark's Picked Sports Players' Union, owns the registration for the expression 'Team Danmark' as a device mark (with the five Olympic rings and a stylized flame) and as a word mark. The device mark covers goods and services in Classes 1 to 42 of the Nice Classification; the word mark covers goods and services in the same classes, except Class 32.

On November 15 1993 the committee and the union entered into an agreement on the commercial use of the marks. A Gallup survey indicates that 64% of the population knows or is aware of the TEAM DANMARK device mark.

Jobteamdanmark A/S is a successful employment and recruiting agency, which was established in 1999. The logo of the firm combines the Danish flag and the expression 'Job Team Danmark'. In 1999 the firm applied to register the trademark JOBTEAMDANMARK. The committee opposed the application.

The registrar upheld the opposition, indicating that the committee's trademark was used not only for sporting activities, but also to give career advice to sports people. Further, the registrar found that the mark was well known for such services. The Trademarks Board of Appeal upheld the decision of the registrar.

Jobteamdanmark appealed to the Commercial Court. It argued that the committee's trademarks consist of two common words ('team' and 'Danmark', which is Danish for 'Denmark') which are weak when used as a trademark, either alone or in combination. Jobteamdanmark accepted that the committee's marks are well known, but only for sporting activities.

Before the court, the board of appeal and the committee argued that Jobteamdanmark's mark was confusingly similar to the committee's trademarks. Further, it sought compensation for misuse of its well-known marks, indicating that its main sponsor had paid Dkr1 million (approximately €135,000) to use the marks and had obtained a turnover of Dkr160 million (approximately €21.5 million) since 1999.

The court found that the mark TEAM DANMARK is well known with regard to professional sports in Denmark due to the sponsoring of various firms. However, the court held that it was irrelevant whether the trademark is well known for specific goods or services. A trademark which is well known for certain goods or services may prevent the registration of an identical or similar mark for other goods or services if it is recognized by the majority of the consumers who use the relevant goods and services. The court referred to the decision of the European Court of Justice in General Motors Corp v Yplon SA (C-375/97) and to its own decision in a case concerning a well-known mark for cars (RR) which prevented the registration of the same mark for chocolate products.

In addition, the court found that the marks were similar as TEAM DANMARK is included in its entirety in JOBTEAMDANMARK. The addition of the word 'job' did not change this finding, as the public could be misled into believing that TEAMDANMARK in combination with the word 'job' referred to:

• services of the committee for the employment of sports people; or
  
  
• a business which worked in cooperation with the committee.

Therefore, the court upheld the opposition against the registration of the mark JOBTEAMDANMARK. Based on the value attached to the trademark TEAM DANMARK, the court ordered that Jobteamdanmark pay Dkr200,000 (approximately €27,000) in damages and Dkr70,000 in costs. The decision is final.

Christian Levin Nielsen, Zacco Legal, Hellerup