On 21 June 2012, the Copenhagen Maritime and Commercial Court decided in case no. V-23-11 that there was no risk of confusion, but that the two marks are suitably similar to the effect that the group of consumers could assume that the two marks are related. Use of the mark applied for for footwear could imply an undue exploitation of the well-known mark’s distinctive character and reputation.
In 2007, Copenhagen Republic ApS applied for registration with the Danish Patent and Trademark Office of below device mark with the text Copenhagen Republic. Converse Inc., which has registered the other device mark shown, filed an opposition against the registration, and the case has since then been considered by the Danish Patent and Trademark Office, the Board of Appeal for Patents and Trademarks and now also by the Copenhagen Maritime and Commercial Court.
As can be seen, the marks are similar due to the fact that they consist of a five-pointed star in a circle as well as words above and below, which follow the curve of the circle.
The Court stated in particular in respect of the dominating five-pointed star that this must be deemed a simple figure and a weak mark element, which one could nearly consider a geometrical figure.
|As for the words in the device mark, the Court noted that those differ visually by using capital/small letters and by the number of words, colours and typography. In addition, the sounds of the words are markedly different when pronounced and, according to the Court, there is absolutely no overlap in meaning.
Against this background, the Court found that there was no risk of confusion between the two marks. The Court found, however, that the marks are similar and that, consequently, in a relevant group of consumers, an assumption may arise that the marks are related.
Against this background, the Court found that the Converse mark, which was uncontestedly a well-known trademark, prevented registration of Copenhagen Republic’s mark for “footwear” in class 25 as the use of the mark for this group of goods may be assumed to result in undue exploitation of the Converse mark’s distinctive character and reputation.
However, the Court found that there was no basis for establishing that the use of Copenhagen Republic’s mark for groups of goods other than footwear would result in undue exploitation of the Converse mark’s distinctive character or reputation or be detrimental to such distinctive character or reputation.
The judgment illustrates an interesting borderline case between risk of confusion and improper assumption of a relation without any actual confusion. Within the area of trademarks, infringement is only rarely found without there being a risk of confusion.