The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S).

The parties to the dispute

Before going into the details of the dispute, the parties are briefly presented in the following. H.C. Ørsted is a well-known Danish physicist and chemist who discovered that electric currents create magnetic fields, thereby establishing proof of a link between electricity and magnetism. This formed the basis for the electricity production we know and use today – especially in respect to more green energy sources.

The plaintiffs in this case are seven descendants of H.C. Ørsted and his brother Anders Sandøe Ørsted.

The defendant is a Danish based and Danish state-owned company. Within recent years, they have gone from managing gas and oil resources to expanding the business into the electricity field. Now they are only operating within the electricity field and their business is primarily focused on green energy sources, e.g. wind power. Because of the change in business, the name DONG (which is an abbreviation for Dansk Olie og Naturgas – Danish Oil and Natural gasses), was no longer appropriate. Therefore, the group changed their name to Ørsted A/S on 2 October 2017.

The case

This resulted in a lawsuit in January 2018 against Ørsted A/S and the remainder of the Ørsted group. The purpose of the lawsuit was to prevent the use of the name ØRSTED as a trademark, domain name and company name within the group.

During the case the descendants of H.C. Ørsted argued that, due to the relatively low number of persons bearing the name Ørsted, the name Ørsted was considered a protected name in Denmark as a consequence of Danish law, thereby preventing unauthorized use of said name as a company name or trademark by the Ørsted group.

The Danish Trademark law excludes marks from registration both in terms of absolute and relative grounds of refusal. An example of a relative ground for refusal of registration of a mark is if the trademark “unauthorized consists of a person’s name to which another party has the lawful title… unless it is intended to refer to a long-deceased person” (our own translation of the Danish legal text). The exclusion of long-diseased persons is stated directly in the law. The same is not the case in the European Trademark Directive or in the EUTMR governing the European Trademarks.

The decision

Although the seven descendants all used the name Ørsted in relation to their respective commercial activities, the Danish Maritime and Commercial High Court found that the Ørsted Group, based on their commercial exploitation and marketing activities related to the change of company and group name, sought a reference to H.C. Ørsted, whom – as mentioned above – discovered electromagnetism, and formed the basis of the electricity production as we know it today.

As a result, the ØRSTED trademark and company name made a reference to a long-deceased person (H.C. Ørsted died in the year 1851), meaning that the relative ground for refusal was explicitly not applicable in the case.

The Danish Maritime and Commercial High Court further found that the Danish Company Law did not provide a broader protection than the Trade Mark Act and, therefore, held that the Ørsted group was not precluded from using Ørsted as its company name.

On this basis, the Danish Maritime and Commercial High Court ruled in favor of the Ørsted group and awarded the entire group DKK 1 million in legal costs.

The costs are to be jointly covered by the descendants’ legal expenses insurance companies by 1/7 each and any residual balance is to be paid by the Danish state, as the descendants were granted free trial during the proceedings.

Reflections

Despite the descendants’ own interest in the Ørsted brand, this was not enough for the relative ground of refusal to apply, as the Ørsted group was able to document that the group was intentionally named after the long-deceased H.C. Ørsted.

The case illustrates that the exemption clauses in the Danish Trade Mark Act regulating the grounds for refusal will be interpreted in accordance with the wording and that there will be granted no wider protection than intended by law.

The case is interesting from a Danish perspective, as the descendants were granted free trial and lost the case, thereby, potentially causing the state a loss as well, as they are ultimately paying the legal costs if the descendants’ insurance companies do not cover the entire amount awarded. The fact that the Ørsted group is a state-owned company makes this twist even more intriguing.

From a more international point of view, this story is a friendly reminder that even though the European Trade Mark Directive makes trademark regulation within the European Union and the respective member states more transparent and uniform, there may be differences in the laws of the respective member states based on the member states historical laws and perspectives.

This case may not have had the same outcome if the French, German or Spanish courts had to rule a decision. Not even based on the European Trade Mark Directive, as it simply states “the right to a name” as a relative ground for refusal (Article 5, 4 (b)(ii)) without exempting long-diseased person’s names.

Connect with Josefine, Claes, and Søren on LinkedIn.

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Photo of Claes Wildfang of DAHL Claes Wildfang of DAHL

Claes Wildfang is specialized in litigation and dispute handling within corporate and commercial law, especially proceedings concerning management responsibility, professional responsibility, business responsibility, and intellectual property rights. He gives legal advice to both private and public companies with national and international profiles, among others IP based companies and insurance companies. He assists clients in national and international legal and arbitration proceedings, prohibitions and evidence assurance.

Claes Wildfang is recommended by Chambers & Partners within dispute law: “Claes has considerable experience within litigation and arbitration, nationally as well as internationally.”

Claes Wildfang is appointed by the Danish Bar Association as one of the few lawyers who acts on behalf of the Bar Association in litigation matters. Furthermore, he is regularly engaged in solving attorney related issues of ethical character through the internal committee in DAHL.

Finally, Claes Wildfang has several years of experience in teaching as external associate professor, while also contributing to several academic articles.

Photo of Søren Wolder of DAHL Søren Wolder of DAHL

Søren is an attorney in the Herning office of DAHL.  His areas of expertise are competition and procurement law, and IT and IP Law.