Use of 'Tivoli Night' for pornographic broadcasts infringes TIVOLI mark

Denmark
The Danish Maritime and Commercial Court has ruled that a local television station, Innocent Pictures ApS, was not allowed to use the terms 'Tivoli' and 'Tivoli Night' in the context of pornographic broadcasts on the grounds that such use infringed the registered trademark TIVOLI (Case V 64/07, December 12 2008).
 
Danish amusement park Tivoli A/S is the owner of the word mark TIVOLI for a wide range of goods and services, including film production and film presentation. Tivoli also owns a figurative mark depicting a skyline with a number of the amusement park’s most famous rides and buildings (including towers and a Ferris wheel). A survey carried out in 2002 named TIVOLI the third most powerful brand in Denmark after TUBORG and LEGO. A 2005 study based on interviews with 800 respondents showed that TIVOLI was the second most recognized brand in Denmark. That same year TIVOLI was also named the eighth most powerful brand in the country. 
 
Innocent produced and broadcast pornographic television programmes using the terms 'Tivoli' and 'Tivoli Night' in combination with the image of the skyline of an amusement park (including towers, a roller coaster and a Ferris wheel).
 
Tivoli filed suit, arguing that:

  • the TIVOLI mark is primarily directed at families with children; and
  • use of the name Tivoli in association with pornographic programmes damaged the reputation of the mark.
Innocent argued that:
  • it had selected the expression 'Tivoli Night' for its broadcasts because the term 'Tivoli' was associated with the concept of 'amusement'; and
  • 'Tivoli' was a generic term meaning 'amusement park'. 
With respect to the skyline used in the television programme, Innocent argued that it did not depict the exact same buildings as those in Tivoli's registered trademark.

The Maritime and Commercial Court stated that TIVOLI is a well-known trademark which enjoys broad protection against use of identical marks by third parties for any goods and services. The court concluded that Innocent’s use of the terms 'Tivoli' and 'Tivoli Night' for its pornographic broadcasts:
  • constituted an infringement of Tivoli's well-known word mark;
  • took unfair advantage of the reputation of the mark; and
  • caused damage to the distinctive character or reputation of the mark.
The decision is in line with previous case law, including a Supreme Court decision in which it was held that the trademark COCA-LINE for footwear infringed the well-known COCA-COLA mark (Case U1991697H).

In the present case, the court further held that Innocent’s use of the amusement park's skyline in combination with the words 'Tivoli' and 'Tivoli Night' constituted an infringement of Tivoli's figurative trademark.

The court awarded Tivoli damages in an amount of approximately €40,000 and Innocent was ordered to pay a fine of approximately €6,600. The amount of damages awarded was relatively large due to the fact that use of the TIVOLI mark for pornographic programmes negatively affected the mark.

Tivoli had also argued that Innocent’s use of the terms 'Tivoli' and 'Tivoli Night' constituted a breach of the Danish Marketing Practices Act. However, the court did not specifically address this issue. Rather, the court stated that since the Trademarks Act took precedence over the Marketing Practices Act in this case, there was no need to address the issue. However, it is likely that Innocent's use of the mark also violated the Marketing Practices Act and it would have been useful to have the court’s opinion in this regard.
 
The decision has been appealed to the Supreme Court.
 
Lisbet Andersen, Bech-Bruun, Copenhagen
 

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