Download A team effort – avoiding trademark troubles in advertising campaigns

Roundtable By Trevor Little
Feature
By Xxx and Xxx
A team effort – avoiding
Xxx
trademark troubles in
advertising campaigns
Practitioners from China, Europe and the United States discuss the
trademark issues involved in advertising, and how counsel can ensure
that
Xxx.their voice is heard
Whether in the physical world or online, in
trade press or the mass media, advertising
is central to any marketing strategy; but it
also presents a diverse range of challenges
for trademark counsel. In this dedicated
roundtable, experts from four jurisdictions
– Rachel Tan and Ying Yihong from Rouse
WTR Mette Bender and Henriette
Xxx.
in
China;
Vængesgaard Rasch from Awapatent in
Denmark; Angela Boman and Ann-Charlotte
Järvinen from Sweden’s Awapatent; and
Danny Awdeh and Mark Sommers from
Finnegan, Henderson, Farabow, Garrett
& Dunner in the United States – outline
the issues that arise when advertising and
trademark rights intersect.
When developing an advertising campaign,
at what point in the process should
marketing people consult with trademark
experts and how can counsel ensure that
their voices are heard?
Danny Awdeh: Trademark counsel should
be consulted early so that potentially
infringing elements can be identified and
addressed before the campaign progresses
further or is released to the public. Among
other things, counsel should identify
marks, designs, logos, taglines and other
elements that serve or could serve as source
identifiers, and that should therefore be
cleared for use and registration before they
are adopted. Consulting counsel early on
is particularly important, because to an
untrained eye, some of these elements
may not immediately come to mind as
trademarks requiring clearance. Counsel’s
early involvement is also important because
if a particular ad concept requires extensive
clearing, this may affect the timing of the
campaign’s launch and the overall cost
102 World Trademark Review June/July 2013
of the campaign. Also, it is far better to
identify and address potential risks before a
campaign launches and potentially exposes
a company to infringement lawsuits and
damaging or embarrassing press. Counsel
can ensure that their opinions are known
during these early stages by keeping an
open dialogue with the creative team
developing the campaign, informing them
of the potential risks and striking a balance
between the team’s creative objectives and
any legal concerns.
Mette Bender: Ultimately, if marketing do
not consult trademark experts in the early
stages of a campaign, they risk working with
marks which, for instance, are descriptive
and cannot be registered, and spending
money without obtaining the intended
mark. An even worse situation is if the
marketed trademark infringes another
party’s mark. If so, the company may be
met by a claim for financial compensation
on top of all the money already spent to no
avail on the project, and its own goodwill
may be damaged. A constructive dialogue
must therefore be established in order to
ensure that the marketing people consult
the trademark experts, who in turn must
be visible and available, and understand the
intention behind the campaign.
In our view, a crucial aspect of avoiding
conflicts is establishing a close relationship
between the legal advisers and the marketing
division. The closer the contact and the more
natural it feels for the marketing division to
talk to legal advisers, the easier it becomes
to avoid potentially expensive court cases.
Taken one step further, the ideal situation
would also involve a close relationship
between the legal advisers and the local legal
agents, who are often indispensable when it
comes to launching marketing campaigns in
foreign jurisdictions.
Angela Boman: That said, it is a wellknown dilemma for both external and
in-house trademark counsel to make sure
that their voices are heard early enough
in the process. Too often, short-sighted,
sub-optimal decisions are taken with the
own department’s budget in mind, which
can be fatal after the launch of a campaign.
Companies that wish to minimise the
risk and optimise their chances to protect
branding elements in their advertising
need to ensure that the marketing people
and trademark experts consult with each
other very early in the creative process,
and well before decisions to go ahead with
investments in a specific idea are taken –
preferably at a stage when alternative ideas
are assessed.
For companies that apply an established
project process in which the marketing
and trademark/legal people work closely
together, the risks of significant costs and
bad will due to infringement or unlawful
marketing or inability to obtain registration
can be minimised. In such cases, clearance
of important legal trademark and
marketing issues can be performed at an
early stage, which makes time for creative
discussions and solutions and, when
needed, for measures in order to avoid
legal implications. The trademark experts’
greatest challenge is to make sure that
they contribute by presenting possibilities
and positive alternatives where risks are
identified, and do not ‘kill inspiration’.
Rachel Tan: Marketing teams also need to
know that China operates a ‘first-to-file’
trademark regime. Further, in the past,
seemingly descriptive words were registered
due to less stringent examination standards.
If trademark counsel are consulted only
at the later stages, practically speaking,
it is likely to be far costlier to change the
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Roundtable Advertising law
Feature: Xxx
trademark if any legal risk arising from
the content is identified – especially if the
mark may constitute infringement. To assist
marketing, it is advisable to provide training
or a handbook with simple rules, so that the
marketing people will take the relevant legal
issues into account and make the necessary
inquiries when developing new advertising
campaigns. In this regard, we recommend
incorporating a standard clearance request
into the initial stages of the marketing
workflow. This can make it easier for
marketing people to receive timely feedback
on whether their creative content needs to
be cleared.
Which administrative bodies are
authorised to regulate advertising in
your jurisdiction?
Ying Yihong: In China, the Administration
of Industry and Commerce (AIC)
regulates advertising, and it also handles
administrative trademark enforcement.
The AIC has the following powers, with
punishments applying to both advertising
agencies and their clients:
• stopping the advertisement;
• ordering public corrections;
• circulating a notice of criticism;
• confiscating illegal gains;
• issuing fines;
• suspending business operations; and
•revoking the business licence or
advertising licence.
AB: The Swedish Consumer Agency and
the Swedish Consumer Ombudsman are
the supervisory authorities for a number
of consumer-related laws, including the
Marketing Act.
According to the Marketing Act, a trader
whose marketing is found to be unfair may
be prohibited from continuing with that or
other similar activities. Such prohibitions
shall be subject to a conditional financial
penalty, unless particular circumstances
render this unnecessary. Proceedings in
respect of a prohibition or order may be
instituted with the Consumer Ombudsman
by a trader affected by the marketing in
question, or by a group of consumers,
traders or employees.
The Consumer Ombudsman can take
legal action against traders in regard of,
among other things, misleading advertising
in cases of minor importance by issuing
orders and injunctions, which shall be
subject to a conditional financial penalty.
In order for the order or injunction to
be valid, the trader must accept it either
immediately or within a certain period. If
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foodstuffs, while the National Agency
for Pharmaceuticals ensures that rights
holders comply with the legislation on
pharmaceuticals.
Danny M Awdeh
Partner, Finnegan, Henderson, Farabow,
Garrett & Dunner
[email protected]
Danny Awdeh is an experienced trademark
litigator representing clients in federal
district and appellate courts around the
country and before the Trademark Trial
and Appeal Board of the US Patent and
Trademark Office. Mr Awdeh counsels a
diverse client base, ranging from large
international companies to start-ups in
industries including hospitality, clothing,
sports, finance, healthcare, electronics and
industrial products. In addition to litigation,
Mr Awdeh advises clients on the selection,
adoption, maintenance and enforcement of
their trademarks in the United States and
around the world.
the order is accepted, it applies as a final,
non-appealable judgment. If the trader
violates the official action, the ombudsman
can sue the company before a district
court. In cases where the legal situation is
unclear, the ombudsman can bring the case
before the Market Court instead of issuing
an official action. In respect of certain
intentional or negligent breaches of the
Marketing Act, a trader may be ordered to
pay a market disruption charge, which is
paid to the Swedish state.
Henriette Vængesgaard Rasch: Denmark
also has a Consumer Ombudsman,
which ensures that companies act in
accordance with the principles of fair
marketing practices. If they do not, it may
censure the company and order it to act
differently or take a decision on this. It
can issue fines and has the power to take
infringers to court. Elsewhere, the National
Agency for Foodstuffs ensures that rights
holders comply with the legislation on
DA: The primary administrative bodies
are the Federal Trade Commission (FTC)
and the National Advertising Division
(NAD). The FTC is a government agency
that regulates and oversees advertising
in the United States. It has the power to
investigate and take legal action against
companies that engage in false or deceptive
advertising. By contrast, the NAD of the
Council for Better Business Bureaux is a
self-regulating advertising body and offers
a resolution process that can be a faster,
more cost-effective alternative to litigation.
NAD decisions may require competitors
to modify or discontinue challenged
advertisements, and/or to demonstrate
that certain ad claims are substantiated by
sufficient evidence.
Are there controls in relation to the
advertisement of particular types
of goods?
AB: In Sweden, the Tobacco Act regulates,
among other things, how tobacco can be
marketed towards consumers, trade and sale
restrictions in respect of tobacco, the use
of tobacco trademarks in relation to other
types of goods or services and sponsorship.
The Consumer Ombudsman specifically
supervises the marketing of tobacco
and takes action against breaches of the
Marketing Act. Meanwhile, the Alcohol Act
regulates, among other things, how alcoholic
beverages can be marketed. Medical claims
cannot be made about food or dietetic
substances – any products which are
marketed using medical claims are classified
as pharmaceuticals or herbal remedies,
which must be approved by the Swedish
Medical Products Agency before sale.
HVR: Likewise, in Denmark, the bodies
mentioned previously ensure that
rights holders act in accordance with the
legislation and take appropriate action
where they do not. They may, for example,
impose a ban on a marketing campaign or
issue a ruling.
Mark Sommers: In the United States,
there are both federal and state-specific
regulations for consumer products such as
foods, drugs, cosmetics and medicine. For
example, federal regulations prohibit the
promotion of tobacco products through the
sponsorship of sporting or entertainment
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events and restrict the advertisement of
such products to young adults. For alcohol
products, industry guidelines provide
that advertisements should be placed in
broadcast, cable, radio, print and internet/
digital communications only where at
least 71.6% of the audience is reasonably
expected to be of legal purchasing age.
Prescription drug advertisements are also
heavily regulated. For example, television
advertisements must verbally disclose the
drug’s most significant risks, and disclose
all other risks identified in the drug’s
prescribing information or provide sources
where viewers can find the prescribing
information for the drug. New York City has
made recent headlines for its proposal that
cigarette displays be covered behind checkout counters. These are just a few examples.
YY: In China, specific controls similarly
address particular types of goods, such as
medicines, medical appliances, tobacco,
food, alcohol, cosmetic products, home
electronic appliances and financial services.
The regulations normally require preapproval of the products to be advertised
and restrict the content of advertisements.
The Chinese authorities have established
detailed rules for products and services
that can have an impact on public health
and safety. Among others, pharmaceuticals
and health-related advertisements are
closely regulated.
When is use of a third-party trademark in
advertising considered to be infringing?
DA: Trademark infringement generally
occurs when use of a third-party mark
is likely to cause confusion, mistake or
deception. US trademark law recognises
that a third-party mark may be used fairly
in two primary ways. First, a third-party
mark may be used purely descriptively in a
non-trademark manner. This is commonly
referred to ‘classic fair use’ and is a defence
to trademark infringement. For example,
an auto-repair shop may advertise its
‘car mechanics’ without infringing the
mark CAR MECHANICS for an automobile
magazine. The second type is referred to as
‘nominative fair use’. This permits use of a
third party’s mark under certain conditions
to identify the third party’s goods or
services. For example, an auto-repair shop
may make limited use of the mark FORD in
plain text to advertise that it repairs Ford
cars without infringing the FORD mark.
US courts generally consider the following
factors to determine whether such use
constitutes nominative fair use:
104 World Trademark Review June/July 2013
Mark Sommers
Partner, Finnegan, Henderson, Farabow,
Garrett & Dunner
[email protected]
Mark Sommers practises exclusively in the
areas of trademarks, domain names, dilution,
unfair competition and false advertising.
Both domestically and internationally, Mr
Sommers provides a full range of services
including litigation, counselling, clearance
and infringement opinions, and licensing.
He has litigated a broad range of trademark,
unfair competition, domain name, name
diversion, trade dress and false advertising
cases before the federal courts and the
Trademark Trial and Appeal Board of the US
Patent and Trademark Office.
•The product or service is not readily
identifiable without use of the thirdparty mark;
•Only so much of the third-party mark
is used as is reasonably necessary to
identify the product or service; and
•The user has done nothing that would
suggest sponsorship or endorsement by
the third-party mark owner.
RT: In China, this is considered on a caseby-case basis. The Trademark Law does
not provide an exhaustive definition
of ‘use’, but provides that use of a
trademark includes use on a product or
on packaging, in a commercial document
or advertisement, at an exhibition and in
other commercial activities. Therefore,
one must consider a wide range of uses.
There are exceptions where descriptive or
informative use of a third-party trademark
is found not to be infringing under the ‘fair
use’ exception. However, since China is
not a common law jurisdiction, there is no
universal view on the fair use exceptions
for trademarks. Thus, the question must be
considered in the context of the particular
advertisement and its surrounding facts
and circumstances.
MB: In Denmark, as a general rule, thirdparty use of trademarks in advertising is
prohibited under the trademark legislation
and the Marketing Practices Act. However,
the trademark legislation contains
exceptions where a third-party mark may
be used – if it is necessary, for example,
in order to describe that a spare part fits
products sold under a certain trademark.
However, the rules are strict and the use
should always be proper.
AB: The Swedish Trademark Act is
harmonised with the EU Trademark
Directive, in that the exclusive right to
a trademark does not prevent use in the
course of trade and in accordance with
honest business practices. For example, as
in Danny’s example, in a case concerning a
workshop that had used Volvo’s trademark
to indicate that it serviced Volvo cars, the
Supreme Court stated that such use is not
illegal if it is done in such a way that any
misconception of a commercial connection
with the trademark owner is excluded,
The trademark experts’ greatest
challenge is to make sure that they
contribute by presenting possibilities
and positive alternatives where risks
are identified, and do not ‘kill
inspiration’
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Feature: Xxx
and if the trademark is not used in a way
that might suggest such a connection
(NJA 1998 s 474). Similarly, a company
which manufactured toy building bricks
stated in its advertisements that its bricks
could be combined with other building
systems “like Lego”. The appeals court
found that this did not imply a commercial
connection between the companies;
Byggis was considered to have a legitimate
interest in informing the public about this
compatibility (NIR 1993, s 502). By contrast,
in the early 1980s, car manufacturer
Mazda likened its Mazda 929 Legato to
“the family’s new Rolls”, in an advert which
depicted a Mazda car. The district court
held that this infringed the ROLLS ROYCE
trademark, as there was no comparative
element in the ad (NIR 1981 s 421)
Considering comparative advertising,
how can one assess whether a sufficient
level of comparison is taking place –
particularly in relation to third-party
use of the brand owner’s non-traditional
trademarks?
AB: In addition to the Trademark Act, the
Marketing Act can be used to prohibit
certain comparative advertisements.
Among other things, a trader may not, in
its advertising, refer to another trader or its
products if the comparison:
• is misleading;
•gives rise to confusion between the
traders or their products or trademarks;
•discredits or disparages the other
trader’s business, products or
trademarks;
•takes unfair advantage of the reputation
associated with the other trader’s
trademark; or
• presents a product as an imitation or copy
of a product with a protected trademark.
However, references to products that
fulfil the same needs or that are intended
for the same purpose are allowed. Thus,
an advertisement does not constitute
comparative advertising if it does not
concern competing products (although such
advertisements may be deemed misleading).
HVR: Ultimately, the courts may assess whether
a sufficient level of comparison is made in
relation to any third-party use of trademarks.
MS: Generally speaking, comparative
advertising claims can be grouped into two
categories: ‘superiority’ claims and ‘tests
prove’ claims. Each can be proved false or
misleading by different forms of evidence,
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the advertised claim itself. Specifically, a
plaintiff challenging a ‘tests prove’ claim
may show falsity through evidence that the
tests are not sufficiently reliable to support
a claim of superiority or some other
quality claimed in advertising, or that the
tests, while reliable, do not establish that
product quality claimed in the defendant’s
advertising. In terms of making superiority
or ‘tests prove’ claims by referencing a
competitor’s non-traditional mark, one need
also bear in mind the nominative fair use
principles addressed previously.
Rachel Li-Mei Tan
Executive, Rouse
[email protected]
Rachel Li-Mei Tan is a senior consultant
at Rouse and the head of its China
trademarks group. Based in Beijing, she
is dual-qualified as a solicitor of England
and Wales and an advocate and solicitor
of the Supreme Court of Singapore.
She has handled a wide range of issues
relating to trademarks and designs in
many jurisdictions around the world, in
particular in China, the United Kingdom,
the European Union and Singapore.
whose type and sufficiency will depend on the
specific comparative advertising claims made.
Superiority claims are those where
a competitor asserts that its product is
equivalent or superior to another’s, or that
its product has a quality or feature that its
competitor’s does not. For these types of
claim, most courts require the plaintiff to
prove that the advertised claims are false,
not just that they were possibly made
without pre-existing data supporting the
claim’s truthfulness. A ‘tests prove’ claim
is one where the advertising party claims
that its product has certain features and
relies on tests to prove it. Certain courts
recognise both explicit and implicit ‘tests
prove’ claims – explicit ‘tests prove’ claims
explicitly state that testing proves the
advertised claim. Implicit ‘tests prove’
claims are typically found in product
superiority advertising, where testing
supporting the claimed superiority is
implied (eg, ‘Brand X bags are five times
stronger than Brand Y bags’).
One may prove the falsity of a ‘tests
prove’ claim by establishing that the
explicitly or impliedly referenced testing
does not support the advertised claim
and do so without proving the falsity of
YY: In China, comparative advertising is
allowed in principle, but under relatively
strict conditions. A brand owner may be
allowed to compare its products or services
to generically similar products or services,
but is unable to refer to the specific names
of a competing product or service.
As in the United States, comparative
advertising claims must be substantiated
with scientifically conclusive test results or
certificates. The test results must be from a
specialised testing organisation appointed
by the state. This implies that other forms
of evidence which adopt more subjective
standards, such as consumer surveys, are
unlikely to be accepted as valid evidence for
comparative advertising claims. Therefore,
the results or proof resulting from scientific
means are important to substantiate
the comparative advertising claims, and
without these, the advertising claims are
vulnerable to challenge.
What constitutes misleading and/or
deceptive advertising in your jurisdiction?
MB: A number of marketing practices are
considered as deceptive or misleading
in Denmark. Some of the more wellknown examples are health claims made
in relation to foodstuffs and beverages.
Any indication that a given product has
a particularly beneficial effect on, for
example, the digestive system must be
backed up by clinical evidence in order for
it to be accepted. Another classic example
is the marketing of products as special
promotions, where the promotional price
has been valid for so long that it has –
legally – become the new normal price. If
this is the case, it is illegal to continue to
market the product as a special offer or
promotion, as this is considered misleading.
DA: The Lanham Act specifically prohibits
two types of advertising – that which is
literally false and that which may be true,
but in context has a tendency to mislead or
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Ying Yihong
Associate, Rouse
[email protected]
Mette Bender
Attorney at law, Awapatent
[email protected]
Yihong Ying is an associate and qualified
PRC lawyer based in Rouse’s Shanghai
office. Mr Ying focuses on various aspects
of IP commercialisation, including
IP-related acquisition, licence/assignment,
due diligence and relevant commercial
transaction and compliance. He is also
experienced in the enforcement and
protection of IP rights via investigation,
administrative enforcement, civil
litigation and lobbying.
Mette Bender has worked with trademark
law since 2006 – first with the Danish Patent
and Trademark Office and the International
Trademark Association, and then at a boutique
Copenhagen IP firm and subsequently a
Danish law firm. She joined Awapatent in 2011
and specialises in trademark, design, domain
name and marketing law, advising on all
issues related to these areas – from drafting
trademark strategies and the selection of
trademarks to legal proceedings concerning IP
rights and their exploitation.
deceive the public. Evidence of consumer
perception is not required for literally false
claims, because by definition they are clear on
their face, thus obviating the need to gauge
how consumers perceive their message.
But in cases of impliedly false claims, it is
the plaintiff’s burden to produce evidence
– usually in the form of market research or
consumer surveys – showing exactly what
message consumers took from the ad.
Under the Lanham Act, a statement
must be ‘material’ to be actionable false
advertising. Courts have held that a false
or misleading statement is a material
misrepresentation if it pertains to an
“inherent quality or characteristic” of
the product and has a tendency to deceive
consumers. Additionally, to be actionable, a
false or misleading statement must be made
“in commercial advertising or promotion”.
•presenting pending scientific opinions,
phenomena or similar as conclusive in
advertisements; and
•using ambiguous language or
misleading consumers in any other
manner in advertising.
YY: There is yet to be a crystal-clear
standard under Chinese law. The Anti-unfair
Competition Law helps to cast some light
on what may constitute misleading and/or
deceptive advertising, as follows:
•providing partial or unilateral views in
advertising or comparing a product;
106 World Trademark Review June/July 2013
Any obviously exaggerated advertising
of a product which is insufficient to cause
misunderstanding among the relevant
public will not be considered misleading
and false publicity.
In examining a claim of false
advertising, a people’s court will take
into account factors such as everyday life
experience, the ordinary degree of attention
of the relevant public, misunderstood facts
and information on the publicised object.
However, since some of these criteria are
not accompanied by detailed explanations
(eg, as to what constitutes ambiguous
language), in practice, each point will be
reviewed on a case-by-case basis within its
factual context.
Ann-Charlotte Järvinen: According to
the Swedish Marketing Act, a trader is not
permitted to use false statements or other
misleading representations in the course
of trade with respect to either its own
business activities or those of another.
This applies in particular to representations
concerning the product’s nature,
quantity, quality or other distinguishing
characteristics, origin, use and risks such as
impact on health or environment. Further,
it is not permitted to use false statements
concerning one’s own trademarks, trade
names and distinctive symbols, or those of
another. The Marketing Act also prohibits
misleading imitations that can easily be
confused with another trader’s known
and distinctive products. Several rulings
state that mainly banal characters cannot
create a distinctive product. Colours or
typefaces as such do not create a unique
product. However, a combination of these
factors may create a distinctive product.
The question of whether a product is known
among the relevant consumer sector is
usually answered through a market survey
combined with evidence of, for example,
the extent and costs of marketing, sales
returns, other exposure of the product,
market shares and witness statements.
The Marketing Act provides that
advertising must comply with good
marketing practices in order to be fair. This
general provision prevents a third party
from unfairly capitalising on the goodwill
and reputation of a trademark. The rights
holder must prove that its brand is well
known and enjoys public goodwill, and that
the third party has attempted to free ride
on this goodwill. In order to succeed in such
a claim, the misleading marketing must be
found to be unfair, which will be the case
where it affects, or would likely affect, the
recipient’s ability to make a well-founded
transaction decision.
Are slogan marks registrable in your
jurisdiction? What is the best way to
ensure that such marks are protected?
YY: In China, slogan marks are registrable
as long as they are distinctive. The
problem is that many slogan marks are
directly descriptive and non-distinctive.
If a brand owner intends to use a slogan
mark consistently for a long time, filing a
trademark application is recommended. For
a descriptive slogan mark, the brand owner
may first have to obtain limited protection
for the slogan combined with a distinctive
house mark, and over time collate evidence
of acquired distinctiveness to support an
application for the slogan mark alone. This
takes commitment from the brand owner
to continuously and consistently educate
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Danish Patent and Trademark Office. The
usual restrictions regarding distinctiveness
and so on apply, just as for any other
trademark; but as a starting point, slogans
are entirely registrable.
the Chinese public that the slogan is being
used as an indication of origin. Further,
the brand owner will have to spend time,
money and effort on collecting the right
evidence of acquired distinctiveness, and
ensure that it is in a form that is acceptable
to the trademark authorities. Before filing
a trademark application, a clearance search
is recommended, to ensure that no prior
conflicting marks pose obstacles to the use
and registration of the slogan mark.
MS: Slogans are protectable and registrable
in the United States according to the
same principles that apply to traditional
word marks. Specifically, if a slogan is
inherently distinctive (ie, it is fanciful,
arbitrary or suggestive), it should be
immediately protectable and registrable.
If the slogan is merely descriptive, it will
not be protectable or registrable until it
has acquired distinctiveness. The best way
to communicate that a slogan is claimed
as a proprietary right is to use the ‘TM’
designation before it is registered and the
“®” symbol after it is registered to call the
slogan out as a source identifier. Of course,
when appropriate, a federal trademark
registration should be obtained.
ACJ: Slogan marks are registrable in Sweden.
European Court of Justice case law states
that the assessment of distinctiveness
for slogans is not stricter than that for
other types of mark; but in practice, the
assessment is stricter. In our opinion,
it is more difficult to obtain trademark
registrations for slogans in Sweden than for
other categories of trademark, due to the
difficulty of establishing distinctiveness.
This is because slogans are often perceived
as pure advertising claims or requests to
buy something, and not as indications
of origin. Slogans that are known on the
market are also protected to some extent
by the Marketing Act. The advantage of
What specific trademark issues are raised
by advertising online under national law
and what remedies are available?
Angela Boman
Partner, Awapatent
[email protected]
Angela Boman’s practice includes all aspects
of IP law and marketing law since 2000.
She specialises in legal issues and disputes,
with a special focus on trademark rights
and IP management. Her clients include
both Swedish and international companies.
Ms Boman has worked exclusively with
intellectual property since 2000. Prior to
that she worked as a legal officer at the
Swedish Patent and Trademark Office,
a law clerk and a reporting clerk at first
and second instances within the Swedish
court system. Ms Boman has also led the
Awapatent branding specialist team.
trademark registration over protection
under the Marketing Act is that it is easier
to demonstrate the existence of a right and
it is not necessary to show that the slogan is
known on the relevant market to challenge
misuse successfully.
MB: Slogans are also registrable in Denmark.
The best way to ensure that such marks
are protected is to register them with the
The terms and conditions of
many social networking and
auction sites require that these
sites be given a royalty-free,
transferable licence to use the
material published thereon
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HVR: Denmark has strict rules on the
information that a seller must disclose
online. Marketing directed towards Denmark,
such as through a website in Danish, must
show the prices including value added tax, as
well as information on the company behind
the website. There are also many other issues
of which to be aware, such as:
•the rules on when a company can
legally contact a former customer when
advertising a new product;
•the terms and conditions relating to
sale; and
• the use of certain words, such as ‘free’.
Third-party trademarks should not be used
in ways which might be considered contrary to
good marketing practices. Further, it is useful
to bear in mind that trademark rights can be
obtained based on use in Denmark, and that
use of a trademark on a website constitutes
use for such purposes.
ACJ: Trademark infringements online raise a
number of questions. Do the Trademark Act,
Marketing Act and other instruments, such
as alternative dispute resolution policies,
apply? Is it possible to shut down websites
by contacting the internet service provider
or initiating an alternative dispute resolution
procedure? Is the infringement or illegal act
directed towards the Swedish market?
The issue of the applicable law
is often resolved by using the WIPO
Recommendation on the Protection of Marks
and Other Industrial Property Rights in Signs
on the Internet (SCT/7/2 October 3 2001),
which recommends that the use of a sign
on the Internet be regarded as trademark
use in a member state only if the use has
commercial effect in the relevant state.
Today, many companies use social
networking for their marketing campaigns.
The terms and conditions of many social
networking and auction sites require
that these sites be given a royalty-free,
transferable licence to use the material
published thereon. If illegal trademark use
is discovered on a social networking or
auction site, the rights holder should first
contact the site owner and try to have the
infringing content removed. The terms and
June/July 2013 World Trademark Review 107
Co-published
Feature: Xxx editorial
to cancellation or transfer of the challenged
domain name(s).
Ann-Charlotte Järvinen
Lawyer, Awapatent
[email protected]
Henriette Vængesgaard Rasch
Attorney at law, Awapatent
[email protected]
Ann-Charlotte Järvinen has specialised in
trademark, domain name and marketing
law since 2001. She deals with all issues
within these areas, including trademark
registrations and trademark conflicts, domain
name disputes, agreements, trademarks and
domain name strategies, both nationally
and internationally. She is a professional
representative before the Office for
Harmonisation in the Internal Market and an
authorised IP attorney in Sweden. Previously
she has worked as a lawyer at the Swedish
Patent and Registration Office and as a domain
name consultant.
Henriette Vængesgaard Rasch has worked
in intellectual property since 1998, working
with the Danish Patent and Trademark
Office before joining Awapatent in
2002. She is particularly experienced
in trademarks and designs, including IP
strategy, registrations of trademarks and
designs and conflicts relating to counterfeit
and piracy problems, infringements and
marketing law. Ms Vængesgaard Rasch
has experience as a litigator and is also
experienced in the drafting and negotiation
of agreements and documents in relation to
IP matters.
conditions of social networking and auction
sites often provide that the site owner can
eliminate illegal information and use of
logos and copyright information.
All remedies under the Trademark
Act and Marketing Act that apply offline
are also applicable to online advertising,
together with a special remedy for online
infringement: the information injunction. If a
rights holder can demonstrate probable cause
that someone has infringed its trademark,
the court may order the service provider to
provide it with information on the origin and
distribution networks of the infringing goods
or services, under threat of a penalty.
cybersquatter registered, trafficked or
used a domain name that is identical or
confusingly similar to its mark, or that
is dilutive of a famous mark, and did so
with a bad-faith intent to profit from
that mark. Under the act, a plaintiff may
obtain monetary damages, attorney’s fees
and costs (in exceptional cases), and an
injunction and/or cancellation or transfer of
the infringing domain name.
The Uniform Domain Name Dispute
Resolution Policy (UDRP) is also available for
resolving domain name disputes. Under the
UDRP, a trademark owner must show that:
•the registered domain name is identical
or confusingly similar to its mark;
•the domain name registrant has no
rights or legitimate interests in the
domain name; and
•the domain name was registered and
used in bad faith.
DA: Advertising online raises many of
the same trademark issues as traditional
advertising. In addition, some trademark
claims are unique to the Internet, such as
cybersquatting and keyword advertising. In
the United States, the Anti-cybersquatting
Consumer Protection Act provides
trademark owners with a civil remedy
against cybersquatters. Under the act, a
rights holder must prove that the alleged
108 World Trademark Review June/July 2013
Unlike under the Anti-cybersquatting
Consumer Protection Act, which allows
for the recovery of monetary damages,
remedies in UDRP proceedings are limited
RT: Issues such as whether keyword
advertising constitutes trademark
infringement and whether a search
engine bears joint liability with a keyword
advertiser are hot topics in China. I will
not address all of the issues here, but
instead will briefly outline the remedies.
Under Chinese law, the trademark laws
also apply to online advertising. If a
dispute arises, the brand owner may resort
to administrative enforcement action,
civil action at court or self-help remedies
(eg, sending cease and desist letters). If
the dispute involves actual sales or other
severe trademark infringements, then
the brand owner may be able to pursue
criminal prosecution.
How is the use of competitors’ trademarks
as keywords treated by the courts in your
jurisdiction?
MS: For several years, US courts have
wrestled with the issue of whether the sale
and purchase of search engine keywords
using a competitor’s trademark constitutes
‘use in commerce’ sufficient to give rise to an
infringement action. The majority position is
that use of a competitor’s trademark in this
way is use in commerce sufficient to give rise
to an infringement action.
For the purposes of determining
infringement in keyword cases, the courts
generally focus on the following factors:
•the strength of the mark(s) used as
keywords;
• evidence of actual confusion;
•the type of goods and degree of care
likely to be exercised by purchasers; and
•the labelling and appearance of the
sponsored ads and the surrounding
context on the search results page.
Additionally, to address the scenario
where consumers might only be diverted to
a competitor’s website without ultimately
making a purchase (ie, initial interest
confusion), the courts consider:
• the similarity of the marks;
•the parties’ simultaneous use of the
Internet as a marketing channel; and
•the relatedness of the parties’ goods and
services.
These factors vary in application
depending upon the facts specific to the case.
MB: The use of competitors’ trademarks
as keywords in Denmark falls under the
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Feature: Xxx
regulation of the Trademark Law and the
Marketing Practices Act. As a starting point,
it is illegal to use another’s trademark in
the course of business. However, there
are certain exceptions to this rule, and
use of another’s trademark as a keyword
– even by a competitor – can sometimes
be considered perfectly legal. In recent
decisions on the matter, the courts have
made a case-by-case evaluation of the given
use to determine whether it violated good
marketing practices and whether use of
the competitor’s trademarks qualified as
trademark infringement.
claiming that such use was misleading
to consumers under the Marketing Act.
The court found that the defendant’s
service was not an imitation of Elskling’s
service because the appearance of its
website differed from that of the plaintiff.
Moreover, the word ‘Elskling’ was not
included in the ad and there was no
implied connection between ‘Elskling’ and
‘Kundkraft’. The court therefore concluded
that the competitor’s use of the ELSKLING
trademark was not misleading under the
Marketing Act.
Elskling also claimed that Kundkraft’s
use of its ELSKLING mark was detrimental
ACJ: Swedish judicial practice on keywords
or dilutive to the mark’s distinctive
follows ECJ case law in C-487/07 L’Oreal
character, as it weakened the mark’s ability
and C-278/08. Keyword advertising that
to identify Elskling’s services from others
unduly exploits the distinctive character
in the market, and risked the word ‘Elskling’
of a well-known trademark can be
being perceived as a general term for the
prohibited under the Marketing Act and
comparison of electricity prices. However,
the Trademark Act.
the court found that there was no substantial
In a recent Market Court suit (Case
risk of dilution. Kundkraft’s use was intended
26/11) Elskling sued competitor Kundkraft
to draw attention to the fact that its service
for using its ELSKLING trademark
was an alternative to Elskling’s, a use which is
WTR house ad 190x125 _wtr half page advert 12/04/2013 16:38 Page 1
as a keyword in online advertising,
lawful under ECJ case law.
RT: Although there is no unanimous
agreement on this issue, Chinese courts are
inclined to consider that use of third-party
trademarks as keywords will be deemed
trademark infringement and/or unfair
competition under Chinese law, especially if
there is obvious bad faith. Out of over 10
cases recently decided in various Chinese
courts regarding the use of third-party
trademarks as keywords that the authors
are aware of, there was only one case in
which no infringement found. The judicial
trend supports the view that use of a
competitor’s trademark as a keyword will be
treated as infringement. WTR
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June/July 2013 World Trademark Review 109