TIVOLI's fame ignored in biscuit case

In Jacobsens Bakery Ltd A/S v A/S Kjøbenhavns Sommer-Tivoli (Case 408/2003 (second section), February 1 2005), the Danish Supreme Court has reversed a Commercial Court decision, which found that the appellant's use of the mark TIVOLI for cookies infringed the respondent's famous TIVOLI mark for amusement parks.

A/S Kjøbenhavns Sommer-Tivoli owns the Tivoli Gardens - an amusement park built in 1843 in Copenhagen. The gardens include a concert hall, a theatre and various fairground rides, and have become one of the Danish capital's most famous attractions. Sommer-Tivoli owns a registration for (i) the word mark TIVOLI for a wide variety of goods and services spread across Classes 1 to 42 of the Nice Classification, and (ii) TIVOLI in a special script, which has never been used, also for various goods and services. Neither registration covers cakes, cookies or biscuits.

In 1954 Jacobsens Bakery Ltd A/S started the production and sale of butter cookies, mainly under the mark TIVOLI. Most of the production was exported. In 1970 Jacobsens started exporting to the United States, where it subsequently obtained a registration for the TIVOLI mark.

In 1988 Jacobsens requested from Sommer-Tivoli permission to use a photograph of the Tivoli Palace, which is set in the Tivoli Gardens and is home to the Tivoli Guards, on the lid of its biscuit tins. The photograph showed the palace with the mark TIVOLI written on the roof in special script and fireworks in the background. Jacobsens paid Sommer-Tivoli a copyright licence fee of Dk20,000 (around €3,000) for a period of three years. It also started using drawings of Tivoli Guards on the packaging of its cookies in conjunction with different versions of the TIVOLI mark. The parties failed to renew the licence agreement but Jacobsens continued to use the photograph and drawings.

Following the conclusion of a separate trademark infringement case filed by Sommer-Tivoli against another bakery in relation to its use of a TIVOLI mark, Jacobsens's alleged unauthorized use of the Tivoli Palace photograph and TIVOLI mark came to light. Sommer-Tivoli demanded that use of the photograph and the mark stop immediately. Jacobsens declined to comply and, consequently, Sommer-Tivoli filed an action for trademark and copyright infringement in the Commercial Court. The trademark action was based principally on the strength of the reputation of its name and mark as its registrations do not cover Jacobsens's goods.

The Commercial Court upheld Sommer-Tivoli's claims, finding that its mark was well-known before Jacobsens started to use the TIVOLI mark for cookies, and describing the TIVOLI mark as a "national icon". The court found that Jacobsens's mark was confusingly similar to Sommer-Tivoli's mark under Section 4(2) of the Danish Trademarks Act, which provides that a mark may be considered confusingly similar to a well-known mark even if it is used in relation to goods or services that are different from those to which the famous mark applies. On the basis of Sections 1 and 5 of the Danish Marketing Practices Act, and Section 1 of the Danish Copyright Act, the court ruled that:

• Jacobsens was not authorized to use the TIVOLI trademark for butter cookies and biscuits;
  
  
• the use of the photograph after the licence agreement had expired amounted to trademark and copyright infringement; and
  
  
• the use of drawings of Tivoli Guards was a violation of a business sign that enjoys a great reputation.

Accordingly, the court ordered Jacobsens to pay Sommer-Tivoli Dk1 million (around €150,000) in damages.

Jacobsens appealed but agreed to pay Sommer-Tivoli Dk83,200 in damages for the unauthorized use of the photograph over a period of 10 years (that amount was based on the original fee and a yearly indexation).

The Danish Supreme Court reversed the Commercial Court decision in part. With regards to damages relating to the unauthorized use of the photograph, the court ordered Jacobsens to pay Sommer-Tivoli Dk150,000. The court reasoned that had there been further arrangements, the licence fee would have likely been increased and, thus, it nearly doubled Jacobsens's suggested amount.

With reference to ownership of the TIVOLI mark, the court focused on when the mark started being used (with or without consent) by both parties. It did not consider it necessary to discuss the fame of Sommer-Tivoli's mark and thus ruled that Jacobsens is the legal owner of the word mark TIVOLI for butter cookies and biscuits. This is because (i) Jacobsens can prove genuine use since at least 1970, and (ii) Sommer-Tivoli had accepted that use by signing the 1988 licensing agreement. Consequently, the court held that Jacobsens's registrations be upheld.

The court further stated that Jacobsens's use of the Tivoli Guards drawings did not infringe any business sign or copyright and that both parties pay their own costs.

Christian Levin Nielsen, Zacco Advocater, Copenhagen