PR mark for chocolate infringes RR mark for cars

In Rolls-Royce PLC v PR Chokolade A/S (Case V94/04, April 24 2007), the Maritime and Commercial Court has held a device mark featuring the letters 'P' and 'R' to infringe the famous RR ROLLS ROYCE device mark.

Rolls-Royce PLC and Rolls-Royce Motor Cars Ltd, which have produced and sold cars and airplane engines under the ROLLS-ROYCE trademark for over 100 years, hold rights to the device marks:

• RR; and
  
  
• RR ROLLS ROYCE, in which the name Rolls appears above the initials while the name Royce appears underneath, the words and letters being framed by a rectangle with rounded corners.

The marks are registered for specific goods in Classes 7 and 12 of the Nice Classification in most countries around the world. They have also been registered as Community trademarks since 1998 and 1999.

Rolls-Royce filed a trademark infringement action against PR Chokolade A/S, a company that imports and produces chocolate upon discovering that PR Chokolade had been using since 1999 a mark consisting of the letters 'P' and 'R' joined together in a rectangle with rounded corners. Above the initials featured the word 'Belgian' while underneath appeared the word 'chocolate'. The device mark was printed on black or brown background using golden letters.

The Maritime and Commercial Court upheld Rolls-Royce's claim. The court accepted Rolls-Royce's survey evidence that its marks are well known. Two surveys carried out in Denmark showed that:

• 38% of the respondents answered, without prompting, that they knew the mark RR and 82% associated the device mark with Rolls-Royce; and
  
  
• 82% of the respondents said they knew the RR ROLLS ROYCE device mark and 95% of these respondents connected it with cars.
  

The court noted that Rolls-Royce's marks are associated with prestige, luxury and quality, and accepted that they must be considered to be well known, meaning that it benefited from a broader level of protection.

The court reasoned that, considered as a whole, the only difference between Rolls-Royce's and PR Chokolade's marks - besides the words 'Belgian chocolate' - was the difference between the letters 'R' and 'P'. The court concluded that the marks were confusingly similar and, thus, PR Chokolade's use infringed Rolls-Royce's marks.

Further, the court accepted that even though Rolls-Royce filed its complaint six or seven years after PR Chokolade started using its mark, the action could not be dismissed on the basis of undue delay and laches because Rolls-Royce had taken action as soon as it became aware of PR Chokolade's use of the infringing mark. The court noted that it took a long time for Rolls-Royce to become aware of PR Chokolade's use because its products are sold mainly to businesses as corporate gifts and in specialized shops alongside tobacco and wine products.

Lastly, the court dismissed the contention by Peter Rasmussen, the founder of PR Chokolade, that he and his wife had designed their mark in 1999 with only a sub-conscious awareness of the RR ROLLS ROYCE marks. The court reasoned that even though Rasmussen may not have copied his logo from a picture of the RR ROLLS ROYCE mark, the fact that he had not taken action to change the mark after customers drew his attention to the fact that the mark was similar to Rolls-Royce's was incriminating.

Accordingly, the court ordered PR Chokolade to pay Rolls-Royce Dkr250,000 (€36,000) in compensation and Dkr125,000 (€19,000) in costs.

Christian Levin Nielsen, Zacco Denmark AS, Copenhagen