Professional use of personal name - Topbrands v Benedikte Utzon
20 December 2016
On 20 December 2016, the Danish Supreme Court delivered a judgment in a case of general public importance between the company Topbrands and the Danish designer Benedikte Utzon about her right to use her own name professionally. The case was about whether a person who has assigned a trademark that includes his or her name may in future use his or her name professionally.
In connection with a reorganisation of her own personally run business the Danish designer Benedikte Utzon assigned her trademark rights to the brand "Benedikte Utzon" for fashion wear to the company Benedikte Utzon A/S. When the company Benedikte Utzon A/S went bankrupt in April 2012, Ms Utzon turned down the trustee's offer that she could buy back the trademark rights for an amount in the range of DKK 25,000 to DKK 50,000. In May 2012, the estate in bankruptcy sold the rights to the trademark "Benedikte Utzon" to Topbrands.
The nine Supreme Court judges found that Ms Utzon may not use her own name as a feature or as a part of a feature, including the designations "Est. 1995 Benedikte Utzon Wardrobe", "Designed by: Benedikte Utzon", "Design: Benedikte Utzon" and "By Benedikte Utzon" as well as various uses of "Benedikte Utzon" in connection with the trademark "My Little Curvy Love" in respect of goods covered by Topbrands' trademark as such use infringes and is disloyal to and damages Topbrands' trademark.
The Supreme Court also found that Ms Utzon could be held independently liable for infringement already committed and Ms Utzon was ordered to pay damages and reasonable compensation (which was doubled to DKK 250,000) to Topbrands as a consequence of the trademark infringement committed as well as a fine of DKK 5,000 with an alternative sentence of imprisonment for eight days.
The judgment emphasises the importance of carefully considering the right setup and enter into the right agreements when using and trading trademark rights containing personal names.
Read the judgment by the Danish Supreme Court (in Danish)
The nine Supreme Court judges found that Ms Utzon may not use her own name as a feature or as a part of a feature, including the designations "Est. 1995 Benedikte Utzon Wardrobe", "Designed by: Benedikte Utzon", "Design: Benedikte Utzon" and "By Benedikte Utzon" as well as various uses of "Benedikte Utzon" in connection with the trademark "My Little Curvy Love" in respect of goods covered by Topbrands' trademark as such use infringes and is disloyal to and damages Topbrands' trademark.
The Supreme Court also found that Ms Utzon could be held independently liable for infringement already committed and Ms Utzon was ordered to pay damages and reasonable compensation (which was doubled to DKK 250,000) to Topbrands as a consequence of the trademark infringement committed as well as a fine of DKK 5,000 with an alternative sentence of imprisonment for eight days.
The judgment emphasises the importance of carefully considering the right setup and enter into the right agreements when using and trading trademark rights containing personal names.
Read the judgment by the Danish Supreme Court (in Danish)
