Supreme Court rules on trademark use following end of cooperation


The Sarbanes-Oxley Institute provides education on the so-called 'SOX' legislation, which was adopted in 2002 in the wake of the Enron scandal to secure better corporate governance and accounting policy. Corresponding legislation was passed in the European Union in 2006 (EuroSOX).

Plaintiff Kersi Porbunderwalla and his firm Controllers ApS provide consulting services on the implementation of SOX and EuroSOX, among other things.

In 2006 the parties tried to establish a cooperation in Europe, including Denmark. The cooperation ceased at the end of 2006.

The Supreme Court established that the use and registration of the trademarks SOX INSTITUTE and EUROSOX INSTITUTE after termination of the cooperation did not violate the Sarbanes-Oxley Institute's trademarks. The court stated that, at the time of the trademark registration in Denmark, no foreign trademark existed for this registration to violate. Neither did a violation of copyright occur.

However, the court also ascertained that the appellants publicly implied, especially on their website, that the cooperation between the parties still existed even after it had ceased, and that such behaviour was disloyal and violated the Marketing Practices Act.

The court also found that an interim injunction that had been issued in 2008 was illegal, as the Sarbanes-Oxley Institute had not sought the injunction in a timely fashion after protesting against the violation in 2007. The Supreme Court estimated that the institute must pay Dkr100,000 for the imposition of the illegal injunction. Further, the institute was ordered to pay Dkr200,000 as costs, including costs before the Bailiff's Court, the Maritime and Commercial Court and the Supreme Court.  

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen

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