The Maritime and Commercial High Court has ruled that Hästens Sängar AB’s blue check pattern is a (well-known) trademark in Denmark. The manufacturer Nordicform AS, Magasin and a number of other distributors have thereby infringed Hästens’ trademark rights and violated the Danish Marketing Practices Act by selling bedclothes with the blue check pattern, and they must pay compensation.

On 14 August 2017, the Maritime and Commercial High Court ruled in a comprehensive case brought by Hästens Sängar AB in 2015 against the Norwegian manufacturer of bedclothes with the blue check pattern, Nordicform AS, and a number of its Danish distributors, including Magasin.

Hästens had brought legal action against these companies claiming that the sale of the bedclothes infringed Hästens’ trademark rights in relation to the company’s iconic blue check pattern. The blue check pattern is not registered as a trademark in Denmark, but Hästens claimed that, by using the trademark, the company had obtained a trademark right to this design in Denmark, and that others could therefore not use the design - not only in connection with beds, but also in relation to bedclothes.

The defendants disputed that Hästens did in fact hold a trademark right and claimed that the marketing of the two types of bedclothes with the blue pattern - even if Hästens should hold a trademark right - did not constitute a trademark infringement as there was no risk of confusion, and that the Marketing Practices Act had not been violated.

As Hästens’ blue pattern is the company’s most important brand and visual identity, the question concerning the company’s trademark right to the blue pattern was of major strategic and commercial importance to the company.

The Maritime and Commercial High Court: trademark protection obtained through significant use

The Court ruled that Hästens had substantiated that the blue pattern, through significant use, had obtained trademark protection, and that the trademark is well-known in Denmark today.

The Court further found that there was confusion between Hästens’ blue pattern and Nordicform’s bedclothes “New Check blå” and “Hofnäs blå” and, consequently, that the defendants infringed Hästens’ trademark rights and violated sections 1 and 18 of the Marketing Practices Act. The defendants were restrained from selling “New Check blå”, and the stocks of the bedclothes, marketing material etc. were to be destroyed.

The Court found, however, that it had been substantiated that, from the mid-1990s, a Swedish company, which was later wound up, had marketed “Hofnäs blå” prior to Hästens obtaining its trademark rights, and that Nordicform which had purchased the shares of the discontinuing Swedish company was therefore entitled to continue the marketing of “Hofnäs blå” notwithstanding Hästens’ trademark rights to the blue pattern and notwithstanding the fact that Nordicform did not own the trademark rights (or any other intellectual property rights) to the blue pattern of “Hofnäs blå”, which the Court considered to be confusingly similar to Hästens’ trademark.

Hästens had not forfeited its right to compensation due to inactivity. The Court ruled that compensation should amount to approx. 10 % of the turnover of “New Check blå”.

The judgment may be appealed no later than 11 September 2017.

Partner Jens Jakob Bugge represented Hästens Sängar AB.