The Association of Danish Law Firms (Danske Advokater), DJØF and Schultz win landmark case concerning the use of the trademark UfR

The cases
In 2015, the Maritime and Commercial High Court banned Schultz from using the so-called UfR number. The Maritime and Commercial High Court assessed that Schultz’ use of the UfR format resulted in a trademark infringement. However, in 2016, the Eastern High Court lifted the ban. The Eastern High Court did not consider Schultz’ use of UfR to cause an adverse effect to “the function of the trademark”. Subsequently, the Appeals Permission Board denied Karnov the right to submit an appeal to the Supreme Court.

Next, Karnov submitted a civil claim to the Maritime and Commercial High Court, which, on 3 May 2018, rendered its judgement. This time the Maritime and Commercial High Court acquitted Schultz on grounds very similar to those of the Eastern High Court in the injunction case.

All in all this means that the Maritime and Commercial High Court accepted the submissions of Schultz as well as the Association of Danish Law Firms (Danske Advokater) and DJØF. The deadline for appeal recently expired, and the Maritime and Commercial High Court thus ended up having the final say in the matter.

Perspective
The complex of cases and in particular the judgment of the Maritime and Commercial High Court is interesting and relevant, because it is one of the first Danish judgements to consider, as a starting point, whether an adverse effect has been caused to one or more of the functions of the trademark. A principle which has also been explored by the CJEU in numerous recent cases.

Even though Schultz did use the trademark UfR, this did not entail a trademark infringement. Schultz did not use UfR as a mark for its goods and services, but rather to allow the customers of Schultz to search for judgements using Schultz’ database using the UfR number – e.g. UfR2008.1020H – which is traditionally used to identify or cite judgements in Denmark.