PRINCE allowed for both cigarettes and biscuits
In General Biscuits Belgie NV v Trademark Board of Appeal (Case V 10-07, December 21 2007), the Maritime and Commercial Court has allowed the registration of the trademark PRINCE for biscuits despite the opposition by the owner of the earlier mark PRINCE for cigarettes.
House of Prince A/S, Denmark's largest tobacco manufacturer, is the owner of the trademark PRINCE for goods in Class 34 (cigarettes). It claimed that its trademark was well known in Denmark and that General Biscuit's use of the trademark for biscuits would be detrimental to, or take unfair advantage of, the distinctiveness or repute of its trademark.
The Trademark Board of Appeal agreed and denied General Biscuits' application for registration. General Biscuits brought the issue before the Maritime and Commercial Court, which ruled in General Biscuits' favour.
The parties agreed that the PRINCE trademark was well known in Denmark for cigarettes. The court made a thorough evaluation of Section 15(4)(i) of the Trademarks Act, under which registration of the trademark PRINCE for biscuits would be excluded only if using it would:
- imply an unfair use of the earlier trademark's distinctiveness;
- imply an unfair use of the earlier trademark's repute;
- be detrimental to the earlier trademark's distinctiveness; or
- harm the earlier trademark's repute.
House of Prince, the owner of the earlier trademark, had to prove that one or more of these conditions applied.
The court stated that it is a well-known fact that tobacco smoking is detrimental to one's health. This is not the case for biscuits, and there was no significant risk that a trademark for biscuits would be able to use unfairly or harm the reputation of a cigarette manufacturer with an identical mark. The court further stated that there was no risk that the use of the trademark PRINCE for biscuits would imply an unfair use of the distinctive mark which had been connected to House of Prince for cigarettes for many years.
The main question was whether the use of PRINCE for biscuits would be detrimental to the reputation of PRINCE used for cigarettes or, in other words, whether permitting General Biscuits to register PRINCE for biscuits would lead to a dilution of the trademark PRINCE for cigarettes.
The court discussed the term 'detrimental to distinctiveness' and concluded that PRINCE as a trademark in itself was not very distinctive. When General Biscuits applied for registration, the trademark for cigarettes had obtained a high degree of distinctiveness through intensive use and marketing since 1957. However, in the meantime, registrations of the trademark PRINCE for goods other than cigarettes had existed in Denmark.
The court also mentioned that from a consumer's point of view, there is a significant distance between harmful and highly taxed cigarettes which are normally sold over the counter and chocolate biscuits which are readily available on supermarket shelves.
House of Prince appealed to the Supreme Court on February 8 2008.
Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen
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