TV3 AB (“TV3”), which operates a commercial TV channel in Sweden, is the holder of two device trade marks consisting of the number “3” inside a circle. In 2003, TV3 filed a complaint against Hi3G Access AB (“Hi3G”) claiming that Hi3G, on penalty of fines of SEK 300 million (approximately EUR 32,000,000), should be prohibited from using the “3” mark as a trade mark with respect to news, sport, entertainment, amusement and other information in connection with moving images. TV3 further requested the Stockholm City Court to order Hi3G to pay to TV3 SEK 100 million (approximately EUR 11,000,000) in damages and interest from the time the statement of claim was served until the time payment is made.
The City Court decided, upon request from Hi3G, to postpone the examination of TV3’s damage claims until a judgment on the infringement has gained legal force.
TV3’s legal grounds for the suit were that the use by Hi3G of a mark for Hi3G's goods and services was confusingly similar with TV3’s “3” trade mark and TV3’s business name and thus is alleged to constitute infringement of TV3’s rights pursuant to the Trade Marks Act and the Business Names Act. In addition, Hi3G’s use, profits from, and is detrimental to the distinctiveness and reputation of TV3’s well-reputed “3” trade mark and business name, TV3 AB. Hi3G’s use of the “3” mark should therefore be injuncted and that Hi3G should be ordered to pay compensation and damages to TV3.
Hi3G argued that TV3 deserves protection for the trade name TV3 and the device marks as such but the sole right does not extend to the separate elements of the device marks or trade name, such as the plain figure. Therefore, TV3’s protection does not hinder Hi3G’s use of its “3” mark, since “3” is not confusingly similar to the marks used in connection with TV3’s business.
The City Court ruled that TV3 had protection for its device marks both by registration and use and that the marks had a reputation, but that TV3 cannot claim any protection for the figure “3” as such. The Court also found that that the services offered by Hi3G could not be considered to be replaceable with TV3’s services and the use by Hi3G of its “3” mark did not constitute an infringement. The Svea Court of Appeal came to the same conclusion as the City Court and also rejected TV3’s request for a preliminary opinion from the ECJ.
In September 2006 TV3 was granted leave to the Supreme Court. TV3 has requested the Supreme Court obtain a preliminary opinion from the ECJ with regard to the questions of i) the presence and scope of the concept of freedom for public use for a sole figure and ii) if the holder of a reputed trade mark which is established for services that initially, because of the state of the art were only to be distributed a certain way, deserves protection for other forms of distribution when they become possible later because of the development of technology. The Supreme Court’s judgment or decision to obtain a preliminary opinion from the ECJ is awaited.