A recent ruling by the Danish Supreme Court has given a valuable interpretation to several interesting trade mark issues:

• Whether the limitation of the effects of a trade mark due to the right to use one’s name in the course of trade applies to legal entities (Article 6(1)(a) of the Trade Mark Directive and Article 12(a) of the CTMR)
• The applicability of the trade mark rules to a very common last name in Denmark
• The possibility of taking legal action even though the defendant has been using the opposed name (at least locally) for 11 years.

The facts of case

Jensen is a very common last name in Denmark (more than 260,000 persons hold that name in Denmark, out of a population of approximately 5.5 million).

Since 1990, the Danish Company Jensen’s Bøfhus A/S ("Jensen’s Steak House" in English), owned by Mr Palle Skov Jensen, operated a number of restaurants under the name “Jensen’s Bøfhus” ("ensen’s Steak House"), and currently has approximately 48 restaurants spread across Denmark, Sweden, Norway and Germany, 33 being in Denmark. The company markets its business under a number of Danish and Community trade mark registrations (word and device marks) containing the word element “Jensen’s” in classes 29, 30 and 43, including:



In 2001, another limited liability company, Sæby Fiskehal ApS ("Sæby Fish Market" in English), owned by Mr Jacob Jensen, started a restaurant business under the name “Jensens Fiskerestaurant” ("Jensen’s Seafood Restaurant"), but only in a small town called Sæby. In 2005, 2011 and 2012 respectively, the company opened three more restaurants under the same name in three other Danish cities; however, those stores were all closed or disposed of shortly after. Today, only the original restaurant is operation under that name.

In connection with the expansion of restaurants in 2011-2012, a new logo for all the restaurants was introduced:



In May 2012, Jensen’s Bøfhus brought a suit before the Danish Maritime and Commercial Court against Sæby Fish Market and the owner Jacob Jensen after becoming aware of the existence of the restaurants under the name of “Jensens Fiskerestaurant”. Jensen’s Bøfhus argued that it held prior rights to the trade marks “Jensen’s” (unregistered, based on use) and “Jensen’s Bøfhus” and that they both had a reputation in Denmark. Further, Jensen’s Bøfhus argued that “Jensens Fiskerestaurant” was (a) confusingly similar to “Jensen’s”/“Jensen’'s Bøfhus”, and (b) taking unfair advantage of the distinctive character or the repute of the marks “Jensen’s”/”Jensen’s Bøfhus”.

The lower court prohibited use of the logo under unfair competition rules but did not find a likelihood of confusion between “Jensen’s Bøfhus” and “Jensens Fiskerestaurant” and did not consider trade mark rights to “Jensen’s” established through use. All trade mark aspects of the judgment were appealed to the Danish Supreme Court.

The Supreme Court judgment

First, the Supreme Court ruled that “Jensen’s” in itself is sufficiently distinctive to be considered a trade mark for the restaurant business and the sale of foods. Here, the Supreme Court applied C-404/02 Nichols to establish that a family name in itself is sufficiently distinctive to serve as a trade mark, contrary to the finding of the Lower Court.

The Supreme Court then found that Jensen’s Bøfhus had acquired trade mark rights to “Jensen’s” based on use before Sæby Fiskehal began to conduct business under the name “Jensens Fiskerestaurant”. During the preparation of the Supreme Court proceedings the parties carried out a representative market survey in which 96 % of respondents associated “Jensen’s” with a steak and family restaurant, i.e. the Jensen’s Bøfhus group of restaurants. Based on this and other factors (such as the number of restaurants and the substantial amount spent on marketing) the Supreme Court ruled that Jensen’s Bøfhus’ trade mark “Jensen’s” has a reputation in Denmark for restaurant services and sale of food products.

Secondly, the Supreme Court ruled that Sæby Fiskehal’s use of “Jensens Fiskerestaurant” in the same line of business takes unfair advantage of the distinctive character and reputation of Jensen's Bøfhus’ well-known mark “Jensen’s”.

Thirdly, the Supreme Court rejected the defendants’ ‘own name’ defence. The court first found that the individual Mr Jacob Jensen was not involved in the operation of the restaurant but ruled that the fact that the company running “Jensens Fiskerestaurant” was owned by Mr Jacob Jensen could not lead to a different result. In this regard, the Supreme Court held that the right to use one’s name in the course of trade according to Section 5(1) of the Danish Trade Marks Act (implementing Article 6(1)(a) of the Trade Mark Directive) is an exception to the general protection granted to the holder of a trade mark, and that this exception cannot be extended to apply to the names of a limited liability company’s owner, shareholders, officers or the like.

Finally, the Supreme Court ruled that Jensen’s Bøfhus had not lost the possibility of enforcing its trade mark rights against Sæby Fiskehal based on acquiescence, cf. Section 9 of the Danish Trade Marks Act (implementing Article 9 of the Directive) or as a result of non-statutory inaction, despite the fact the “Jensens Fiskerestaunt” had been operated for approximately 11 years at the time legal action was taken. To this end, the Supreme Court held (a) that Sæby Fiskehal’s marketing of its restaurant under the name “Jensens Fiskerestaurant” had been very limited and only in local media, and (b) that Sæby Fiskehal was in bad faith due to presumed knowledge of Jensen’s Bøfhus’ well-reputed mark “Jensen’s” from 2001.

Class 46 thanks Lasse Arffmann Søndergaard Christensen (a partner in Gorrissen Federspiel) for preparing this note for publication.