Keeping up with the Jensens: own-name defence to trademark infringement

This article reviews a recent decision of the Danish Supreme Court which discussed the own name defence in trademark law.

5th February 2015

A recent decision of the Danish Supreme Court made interesting comments regarding the distinctiveness of surnames as trademarks and the own-name defence to infringement. The case concerned a dispute between two restaurants over the use of Denmark’s most common surname. The first, Jensen’s Bøfhus, operates a national chain of steakhouses and owns a trademark for the word “Jensen’s” in relation to restaurants. The second, Saeby Fiskehal was a single-shareholder company owned by Mr Jensen. It operates a restaurant called Jensens Fiskerestaurant. The steakhouse sought to prevent the fish restaurant from using the name Jensen, and wanted the domain name jensensfisk.dk transferred to it.

Whilst the Maritime and Commercial High Court ruled in favour of the fish restaurant (deciding that the name was devoid of distinctiveness), the Danish Supreme Court found in favour of Jensen’s Bøfhus. Firstly, the Court referred to the CJEU decision in Nichols which stated that a surname can receive trademark protection provided that it is capable of distinguishing the goods or services of the applicant from those supplied by any other company. The criteria for protection is therefore no different to any other sign. The CJEU decision also stated that distinctiveness should be measured based on the perception of the relevant public, in relation to the category of goods in question.

Based on this ruling, Jensen’s Bøfhus led evidence regarding the distinctiveness of the name ‘Jensen’ in relation to restaurants. It sought to persuade the court that, even though over 260,000 Danes have the last name Jensen and 249 businesses use the name, it is distinctive in relation to restaurants. The results were overwhelmingly in its favour, with 98% of those surveyed associating the name with Jensen’s Bøfhus, or restaurants in general. The name had therefore acquired distinctiveness in relation to restaurants.

The Court then considered whether Saeby Fiskehal could use the ‘own name’ defence to trademark infringement. This comes from Article 6 of the Trademarks Directive, which states that a mark cannot enable its owner to prohibit a third party from using his own name (or address) in the course of trade. The fish restaurant submitted that it was owned by Mr Jensen, and could therefore use his name on its shop front. The Court disagreed. It stated that the owner of the restaurant was Saeby Fiskehal, not Mr Jensen, and therefore his name could not be used to promote it. Exceptions to trademark rights cannot be extended to benefit the shareholders of a limited company. Saeby Fiskehal was therefore found to infringe the trademark. The Court ordered that it cease using the name Jensen and transfer the domain name to the steakhouse.

Lastly, Saeby Fiskehal argued that Jensen’s Bøfhus had given implied consent to the use of the name through their delay in raising an action (the fish restaurant began trading in 2001). Jensen’s Bøfhus successfully challenged this by noting the remote location of their competitor and its lack of advertising. It was therefore found that an action was raised as soon as possible.

The decision shows that the own name defence will only apply where the direct owner of the defendant’s name is being used. Whilst the decision may be correct from a strict legal standpoint, it generated a bit of a backlash for the Steakhouse. After the ruling, Jensen’s Bøfhus received negative reviews and comments on its Facebook page and a petition to boycott the steakhouse was signed by over 100,000 people. Consumers were angry that the national chain had taken steps to prevent an ordinary man from using his own name for the benefit of his business. We have already discussed the importance of considering the wider impacts of litigation in a brand protection webinar. The link to the webinar can be found here.