August 18 2008
The Maritime and Commercial Court recently ruled in Haribo Lakrids A/S v Hela Wine & Spirits (V-105-05).
Confectionery manufacturer Haribo has been in business in Denmark since 1935. In 1955 it began selling liquorice under the designation PIRATOS. In 1964 it registered this designation as a trademark in Denmark in Classes 5 and 30. In 1981 it registered the trademark SUPER PIRATOS in Class 30.
Hela began conducting business in Denmark in 1985 as a wines and spirits producer and merchant. In 2004 Hela obtained registration of the trademark LOS PIRATOS in Class 33, but the mark was extinguished following opposition from Haribo. Hela also registered LOS PIRATAS in 2005, but this registration was also extinguished following opposition from Haribo.
Hela began producing and selling spirits under the name 'Original Los Piratas' and Haribo obtained an interim injunction which was brought before the Maritime and Commercial Court.
The court found that the designation LOS PIRATAS was confusingly similar to Haribo’s trademarks and concluded that the infringement was wilful. The court ordered Hela to pay Haribo reasonable remuneration and damages. As the infringement was deemed to be wilful, Hela was also ordered to pay further compensation as indicated in the latest alterations to the Danish IP acts, which are in keeping with the EU Enforcement Directive.
Hela’s total profits from the sale of its infringing products were Dkr88,989.
The court stated that:
“Determination of remuneration, damages and compensation according to Sections 43(1) and 43(3) of the Act on Trademarks in the present case must be made according to a total estimate and under consideration of those factors mentioned in Article 13(1) of the EU Enforcement Directive and the remarks in Observation 26 to the directive. At the determination in the present case, importance must be attached to the extent of the illegal use of the mark in a number of selling spots with detrimental effect to the trademark’s reputation and position in the market, the information about turnover and profit, and in consideration of the fact that Haribo’s mark, which is aimed at children and young persons, was associated with the consumption of spirits - a connection which Haribo has a special interest in avoiding. The total amount from these considerations is fixed at Dkr150,000.”
The Maritime and Commercial Court also ordered Hela to pay a fine of Dkr50,000 and costs of Dkr104,210.
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