Scandecor Developments AB v. Scandecor Marketing AV and Others and One Other Action, (2001)
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Scandecor Developments AB v. Scandecor Marketing AV and Others and One Other Action, (2001)
HOUSE OF LORDSLord Nicholls, Lord Steyn Lord Hobhouse of Wood- Borough Lord Millett Lord Scott of Foscote OPINIONS OF THE LORDS OF APPEAL FOR JUDGMENTIN THE CAUSESCANDECOR DEVELOPMENTS AB(APPELLANTS)v.SCANDECOR MARKETING AB AND OTHERS(RESPONDENTS)AND ONE OTHER APPEALON 4 APRIL 2001UKHL 21LORD NICHOLLS OF BIRKENHEADMy Lords,1. In 1967 Bertil Hjert and Goran Huldtgren were art students together at Uppsala University. They saw an opening for the sale of art posters, particularly to students and other young people. They set up a company in Sweden, known later as Scandecor International AB. They owned the company equally, and they ran it together, publishing and selling posters and related goods. They used the name Scandecor as a brand name. Scandecor is an invented composite word derived from 'Scandinavian decor'.2. The business prospered, until it claimed to be one of the largest poster businesses in the world. Mr Huldgtren was responsible for sales in the United Kingdom, Ireland, the Scandinavian countries and the United States. Mr Hjert was responsible for continental countries, including France and Germany. Local subsidiary companies, using the word Scandecor as part of their names, were set up to act as distributors. The United Kingdom company was Scandecor Ltd. Two trademarks were registered in this country: a word mark 'Scandecor', and a logo mark incorporating the word Scandecor within a lozenge shaped border. They were registered in Class 16, in respect of items such as posters, calendars, cards and printed art reproductions. In April 1971 the word mark was registered in the name of Scandecor Ltd. In August 1976 the logo mark was registered in the name of Scandecor International, the ultimate parent company. In September 1978 Scandecor Ltd assigned the word mark to Scandecor International, which was registered as proprietor in June 1979.3. Eventually Mr Hjert and Mr Huldtgren fell out. They disengaged by stages, and in 1997 the last contractual ties were severed. Unfortunately, they had made no contractual arrangements for what should then happen about the use of the name Scandecor. These proceedings are the result. Similar proceedings are on foot in other countries. In short, Scandecor Development AB, which acquired the two registered trade marks and other assets of Scandecor International on the latter's insolvency in 1994, objected to Scandecor Ltd continuing to use the word Scandecor as part of its name in connection with the sale of its own posters and calendars. Scandecor Development relied on its rights as proprietor of the two registered trade marks, and commenced these proceedings against Scandecor Ltd for infringement of the marks. The response of Scandecor Ltd was to counterclaim for revocation of the marks, on the basis that they had ceased to be distinctive. Both parties made alternative claims in passing off.4. The trial judge, Lloyd J, declined to revoke the registration of either mark. He held, however, that ...See the full content of this document
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