On 18 January 2019, the Danish Maritime and Commercial High Court gave its decision in a dispute between Royal Copenhagen and the heir to the designer Grethe Meyer. The case pertained to the rights in the name and the trademark BLÅKANT, which is used as the name of an iconic china set from Royal Copenhagen. Bech-Bruun assisted Royal Copenhagen during the proceedings.
With its decision, the Maritime and Commercial High Court lays down that, unless the parties in a working relationship have agreed otherwise, the statutory rights in a trademark vest in the party using the trademark. This applies regardless of whether the trademark has been used for products that the relevant party is entitled to manufacture and sell only according to a licence agreement.
Back in the 1960s, the late architect Grethe Meyer designed a china set for Royal Copenhagen (formerly Den Kongelige Porcelainsfabrik), which Royal Copenhagen has manufactured and sold for many years according to a licence agreement. Royal Copenhagen sells the china set under the trademark BLÅKANT.
In 2015, following Royal Copenhagen's long use of the trademark BLÅKANT, Royal Copenhagen decided to have the trademark registered in Denmark.
In 2017, Grethe Meyer Design/by Isabel Bernadette Brammer commenced proceedings against Royal Copenhagen. Grethe Meyer Design has inherited the rights in the design of the china set sold under the trademark BLÅKANT and claimed that the rights in the trademark BLÅKANT accompany the rights in the china set.
Consequently, the case pertains to the issue of whether, prior to her death, Grethe Meyer had established a trademark right in BLÅKANT, and whether any such rights have passed by inheritance. In addition, the case pertained to the issue of whether an exclusive right may be claimed in a name in general, meaning independently of the trademark right or other statutory right.
Who came up with the name BLÅKANT?
During the proceedings, one matter in dispute has been who came up with the name BLÅKANT for Grethe Meyer's china set back in the 1960s.
Based on the case documents and examinations of witnesses, the Maritime and Commercial High Court has, however, assumed as its basis that the name was created in close cooperation between the parties.
Lack of distinctiveness and regular use
When naming the china set in the 1960s, the name BLÅKANT could hardly be perceived as an actual trademark, since the name BLÅKANT does not have inherent distinctive character. Royal Copenhagen's trademark application in respect of BLÅKANT was registered on the basis of comprehensive documentation showing a continuous and long use of the trademark, and on that background the Danish Patent and Trademark Office found that the trademark had acquired distinctive character by regular use.
During the proceedings, a pivotal point has been whether the parties had agreed or assumed anything as to the right in the name BLÅKANT, and on whose behalf the trademark BLÅKANT had been used and established. Grethe Meyer Design recognised that Royal Copenhagen has used and established the trademark but also claimed that use and establishment of the trademark took place on behalf of Grethe Meyer.
Cooperation agreements between the parties
During the long-standing cooperation between Royal Copenhagen and Grethe Meyer, two cooperation agreements were concluded concerning Grethe Meyer's china set.
The wording of those agreements solely relates to the rights to manufacture and sell Grethe Meyer's china set. The agreements do not mention the rights in the name and the trademark BLÅKANT.
As a reason for arguing that the trademark BLÅKANT had been used and established on behalf of Grethe Meyer, Grethe Meyer Design, among other things, referred to the fact that a natural interdependence exists between a product and the trademark under which it is sold and that a silent assumption exists between the parties that Grethe Meyer as the designer held a right in the trademark.
During the proceedings, Grethe Meyer Design attempted to prove an exclusive right in the name BLÅKANT, independently of any trademark rights. Royal Copenhagen contested that an exclusive right can exist in a name in general since an exclusive right in a name must be reserved for those special events where it is laid down by law, for example, in the form of a trademark right, rights in a feature according to the Danish Marketing Practices Act (markedsføringsloven), company law regulation of company names, etc. The decision made by the Maritime and Commercial High Court does not explicitly comment on this issue but only deals with the issue of the right in the name based on the parties' agreement. As such, it seems that the decision must be construed as dismissal of any exclusive right in names in general.
Decision by the Maritime and Commercial High Court
In its decision, the Maritime and Commercial High Court reaches the conclusion that the licence agreements between the parties cannot be construed as containing a regulation of or assumption as to the right in the name and the trademark BLÅKANT. The Maritime and Commercial High Court also concludes that it has not been proved that Grethe Meyer reserved or acquired a right in the name and the trademark BLÅKANT. Consequently, the rights in the trademark BLÅKANT cannot have passed by inheritance to Grethe Meyer's heir.
This implies that Grethe Meyer Design cannot demand that the trademark registration of BLÅKANT be transferred to it or revoked. Thus, Royal Copenhagen is and remains the rightful holder of the trademark rights in BLÅKANT.
Comments by Bech-Bruun
In our opinion, this is the first time that a Danish court takes a position on a dispute of this kind about the rights in names and trademarks.
The decision made by the Maritime and Commercial High Court verifies Bech-Bruun's perception of the state of the law, which is that the rights in a trademark vest in the party using the trademark, unless the parties have agreed otherwise. The burden of proving this rests with the party not using the trademark but nevertheless alleging to hold the rights in it. This applies regardless of whether the trademark has been used for products that the relevant party is entitled to manufacture and sell only according to a licence agreement.
The decision also dismisses the viewpoint that a natural interdependence exists between a trademark and the product of which the trademark is a part. The decision is relevant for the many holders of design rights and copyrights on the one hand cooperating with manufacturers on the other hand, whose licence agreement does not regulate the rights in names and trademarks. The decision lends a helping hand to the manufacturers who as a result of many years of costly marketing and sales work have acquired knowledge of and maybe even distinctiveness in respect of a trademark under which another party's design is sold. An opposite decision would imply an advantage on the part of holders of design rights and copyrights who could easily and free of charge acquire rights in an often valuable trademark by virtue of the manufacturers' use of and establishment of value in the trademark.