Record payout for Rolls-Royce as court confirms mark is well known
The Danish Maritime and Commercial Court has awarded Rolls-Royce Dkr250,000, one of the biggest payouts ever awarded in a trademark case in Denmark, over allegations that its famous mark was infringed by PR Chokolade A/S.
In 2004, Rolls-Royce wrote to PR Chokolade voicing concerns that the latter’s logo might be confused with its well-known ROLLS-ROYCE mark. PR Chokolade’s logo displayed a large golden P and an R intertwined, with the word ‘Belgisk’ above the logo and ‘Chokolade’ below. However, PR Chokolade refused to acknowledge that any infringement might be taking place and further disputed that the ROLLS-ROYCE mark was well known. As a result, Rolls-Royce initiated infringement proceedings before the Maritime and Commercial Court.
Since PR Chokolade’s business has nothing to do with aircraft engines or cars and it uses its logo exclusively for chocolate, it was vital that Rolls-Royce be able to prove that its figurative trademark, which has been in use since 1904 and is registered in most countries throughout the world, was well known. It therefore commissioned two market surveys to support this claim. In the first, a fictitious ROLLS-ROYCE figurative trademark, featuring only two Rs intertwined, was shown. In the second, the mark also carried the words ‘Rolls’ and ‘Royce’.
Both surveys had a positive outcome for Rolls-Royce. In the first survey 38% of the participants immediately recognised the mark and 82% associated it with Rolls-Royce. In the second survey, 82% of participants knew the mark, while 95% of them associated it with cars.
The Maritime and Commercial Court shared this view. As well as awarding Rolls-Royce damages, it also ordered PR Chokolade A/S to pay the costs of both trademark surveys and the costs of the case, a total of Dkr125,000.
The court found it significant that due to the limited range and sales of Rolls-Royce, in particular in Denmark, and the longstanding usage of the mark, “a very particular aura of prestige, luxury and quality” has been conferred on it. As a result it is covered by the protection set out in Section 4(2) of the Danish Consolidated Trademarks Act. In addition, the court referred to the market surveys, which supported its views.
In determining the amount of compensation, the court found it important that Rolls-Royce never licenses out its trademarks. In addition, PR Chokolade’s significant business was, to a large extent, associated with it:
“having manifested itself in the mind of the customers by using its figure trademark that ‘plays on’ an obvious similarity with the ROLLS-ROYCE figure trademark which is, as mentioned above, associated with a very particular aura of prestige, luxury and quality.”
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