Oslo District Court applies Kodak rule in favour of TV soap Hotell Cæsar

In a judgment of 24th September 2008 the Oslo District Court ruled that use of the trademark CÆSAR LAGERHOTELL was detrimental to the goodwill in the registered trademark HOTELL CÆSAR, which was found to be so well known and established as to qualify for protection under the Kodak rule. The Kodak rule affords protection to trademarks against the use of signs that would be unreasonably detrimental to the goodwill in those trademarks, even if the disputed signs or marks do not relate to identical or similar goods.

Hotell Cæsar is the name of a popular Norwegian television series that has been running since October 1998; more than 1,600 episodes have now been broadcast.

The rights to the series are held by Norwegian company Intrige, which in 1998 registered the word mark HOTELL CÆSAR in Classes 9, 38 and 41, and shortly thereafter in Classes 18 and 25. A later registration included other classes, and a combination mark was registered in Class 3.

Both the name Hotell Cæsar and the series logo have been used intensively over a long period in connection with the series. However, sales of merchandise connected to the series and using the brand and logo did not occur on a large scale.

The main issue in the case was whether the extensive reference to and use of the words “Hotell Cæsar” constituted trademark use or whether Hotell Cæsar is merely the well-known name of a copyrighted work and a television programme.

Keiser Gruppen AS rents out storage space. It previously operated under the name Cæsar Lagerhotell AS, but subsequently changed its trading name to Keiser Gruppen AS. However, it continued to use Cæsar Lagerhotell as a secondary trade name and as a mark on its cars and building. The cars also had a logo in the shape of a Roman temple. The Hotell Cæsar series logo includes the capital of an Ionic column. Although both logos are evocative of the ancient world and its architecture, they are not confusingly similar.

The court found that the use of CÆSAR LAGERHOTELL as a trademark and a secondary trade name would create an association with the television series in the mind of the public. Thus, it held that the two (word) marks were very similar and the use of CÆSAR LAGERHOTELL would be prohibited by the Kodak rule set out in Section 6(2) of the Trademarks Act, provided that Intrige was found to have established a right to the marks under that provision.

Intrige had not argued that there was a similarity between the services supplied by the parties. However, it claimed that Keiser Gruppen was infringing its goodwill. The court noted that when a television series is as well known as Hotell Cæsar, it becomes a household name. In the court’s opinion that meant that Intrige would have to accept to a large degree that the marketing of products and services in unrelated fields could create associations to the series without constituting an unreasonable form of exploitation of its goodwill.

However, the court noted that Intrige had actually relied on the part of the provision that deals with the use of a sign being detrimental to the goodwill in another sign or mark. The court commented that when assessing whether a detrimental effect of the use of the sign was unreasonable, it should not be held against Keiser Gruppen that it may obtain some unreasonable benefits by building on Intrige’s marketing efforts.

The court went on to state that the decisive question in the case was whether the trademarks were so well established that they could claim protection under the Kodak rule, and that this assessment did not depend on the general public’s knowledge of the marks since any evidence will normally show whether the public has knowledge of the words, but can hardly be expected to distinguish knowledge of the name of a television series from knowledge of a trademark. Thus, the court stated, the decision had to rely on general considerations and assumptions.

The court found the assessment difficult because on the one hand a trademark can have a very significant value in this area, but on the other the use at issue deviated from the traditional use which constitutes the basis of trademark law. Traditionally, the court noted, the value of a trademark lies in the fact that it shows that the product is identical to a well-known product or originates from the recognised manufacturer. However, some trademarks become so well known in themselves that the public pays for having the trademark on the product, while the product itself and the manufacturer become irrelevant. The court mentioned films and television series as examples of products that can be widely marketed, giving products associated with such films or series huge commercial potential, even if the products are not the film or television series as such. In such cases the legal situation is often complicated, involving both trademark and copyright issues. The court considered that this non-traditional use of trademarks has become well established, and the Kodak rule provides a possibility to achieve protection for this type of right. The concept of commercialisation rights relating to popular films or television series has become so widespread that the general public now understands that the rights of the producers of the film or series in names, logos and signs used for the film or series are an issue. Against this background, the court concluded that in cases where the marketing of the film or series has been as strong as that of Hotell Cæsar in the present case, the public’s perception is that the use in question is use “as a trademark”. Thus, Intrige’s trademarks passed the test for protection under the Kodak rule.

Turning to the question of whether Intrige’s trademarks were exposed to unreasonable detriment, the court noted that it had taken as a starting point the question of what was necessary for Intrige to protect its trademarks. Although it was impossible to consider each infringement in isolation, the use was of a nature that would lead to a weakening of the trademarks with increasing use. The weaker the mark became, the harder would it be for Intrige to enforce its rights. Thus, it would be unreasonable if Intrige were to be denied the enforcement of its rights in the present case.

The court also found that it was irrelevant that Keiser Gruppen’s use was intended to be fun and good natured, and issued a final injunction restraining Keiser Gruppen from using the mark CÆSAR LAGERHOTELL.

An appeal of the judgment was withdrawn, so it is now final.

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