Transcript Recent TM Case Law - || Vondst advocaten

Recent developments in Dutch trade
mark law
London, October 5, 2009
Tjeerd Overdijk
Vondst Advocaten
Van Leijenberghlaan 199
1082 GG Amsterdam
The Netherlands
t: + 31 20 504 20 00
f: + 31 20 504 20 10
e: [email protected] / [email protected]
SC 26 June 2009, Pinocchio / Jaguar
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Defendant Jaguar is the owner of the JAGUAR trade marks, in its view
well-known throughout the world.
Claimant 1: 'Jaguar Shoes for Men‘;
Claimant 2, Pinocchio, filed the trade mark JAGUAR in 1984;
Jaguar demands an injunction for the use of the trade mark JAGUAR
and a declaration of nullity of the filing of 1984.
SC 26 June 2009, Pinocchio / Jaguar
Questions to the Benelux Court of Justice
1. In the context of article 4 under 5 BTA (old), pre-TRIPS, is the
protection of a famous trade mark limited to a right to oppose an
application of the identical sign by a third party for identical or similar
goods?
2. If the answer is negative, do alternative protection requirements apply
for pre-TRIPS period?
3. If the answer is positive, do additional rules or conditions apply besides
the requirement of similarity of goods?
Court of Appeal The Hague, 28 April 2009,
Frenko / Frigor
On 20-09-07, Frenko filed application for BNL trademark for goods of
classification11 ( efrigirators and deepfreezers):
This sign is identical to Frigor’s Benelux TM 437345 dated 24-09-87:
These marks co-existed for over 15 years until 2004. Frenko alleges that
Frigor has no reasonable interest in its opposition and therefore
abuses its right to oppose.
Court of Appeal The Hague, 28 April 2009,
Frenko / Frigor
Questions to the Benelux Court of Justice
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Does article 2.14 under 1 leave room for rejecting an opposition on
account of the fact that filing the opposition amounts to an abuse of this
right?
If the answer is positive: under which circumstances could the right of
filing opposition by the owner of the prior trademark be denied?
If the answer is positive: if such defence was put forward in the
opposition procedure, should the BOIP examine this argument or
should this be judged by the court as stated in 2.17 BCIP?
More in general: could a universal principle of law lead to the
nullification of a trade mark registration in appeal proceedings after
opposition?
SC 12 December 2008 Portakabin/Primakabin
SC 12 December 2008 Portakabin/Primakabin
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Portakabin and Primakabin produce and sell transportable cabins.
Besides its own portable cabins defendant Primakabin lets out and sells used
cabins of its competitor Portakabin.
Primakabin advertises via Google and uses ‘adwords’ Portakabin and
variations.
Upon typing the word ‘Portakabin’, or a variant thereof in the search field, a
sponsored link appears above or aside of the (regular) search results.
Claimant Portakabin seeks a declaratory judgment that Primakabin infringes
its trade mark right by combining keywords with the text of their
advertisements titled ‘new and used units’ and ‘used portakabins’.
SC 12 December 2008 Portakabin/Primakabin
Questions to the ECJ
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Could the use of ad-words be regarded as use of a registered
trademark within 5(1) a HD?
Is it relevant when this reference was made
- In a result list with found pages, or
- In a clearly indicated part with advertisements?
Is it relevant
- Whether the advertiser offers the products under the trademark
directly in the text of the advertisement
- Or that the advertiser offers these products on its own website?
SC 12 December 2008 Portakabin/Primakabin
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If answer to first question should be positive: does article 6 of the
Directive mean that the trademark owner could not prohibit the use of
the trademark as mentioned in question 1, and if so, what conditions
apply?
If answer to the first question should be positive: does article 7 of the
Directive apply in the case that the presented goods of the advertiser
have been put on the market with approval of the trade mark owner?
SC 12 December 2008 Portakabin/Primakabin
 Do the answers above also apply in the case that the advertiser uses keywords
highly similar to the registered trademark and thereby provide a more effective
search result (responding to typological errors)?
 If use of the trademark under article 5(1) of the Directive will not be presumed,
could a Member-State provide for protection against the use, without a valid
reason, of a sign as an ad-word in the case of unlawful use under article 5(5)
HD?
SC 11 July 2008, Makro/Diesel
 Infringement claim on the trade
marks of Diesel
 Makro sold shoes by Diesel
under the trade mark Diesel.
 Under article13 A subpara 9
BTM, Makro alleges that the
trade mark rights of Diesel have
been exhausted.
SC 11 July 2008, Makro/Diesel
Questions to the ECJ
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In the case where goods have previously been placed on the market
within the EEA, but not by him or with his express consent, must the
same criteria be applied in determining whether this has occurred with
the (implicit) consent of the TM proprietor, within the meaning of 7(1)
HD, as are applied in the case where such goods have previously been
placed on the market outside the EEA by the TM proprietor or with his
consent?
If the answer to Question 1 is in the negative, what criteria - whether or
not derived (in part) from ECJ Case C-9/93 - must be applied in in order
to determine whether the trade mark proprietor has given (implicit)
consent within meaning of HD?
Relevant decisions after Opel / Autec
 Supreme Court, 12 December 2008, Portakabin /
Primakabin
 Court of Appeal The Hague, 31 March, Teletubbies
Court of Appeal The Hague, 31 March,
Teletubbies
 Ragdoll is the owner of BTM and CTM registrations for
TELETUBBIES, registered merchandising products such as dolls,
clothing, toys, etc
 In 1998 defendant Jadnanansing registered the BTM
TELETUBBIES for, inter alia, merchandising articles.
 In first instance the claim for infringement was denied. The use of
the sign TELETUBBIES for merchandising articles was not
considered to qualify as trademark use. The Court held that the
public only takes the word TELETUBBIES on such articles as a
reference to the Teletubbies 'characters'.
Court of Appeal The Hague, 31 March,
Teletubbies
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In case the trade mark is affixed on consumer goods, this implicates a
connection between the goods and the supplier, which constitutes use of the
trade mark to distinguish goods.
Only in very exceptional cases, such as in Opel/Autec, affixing the trade mark
to the goods does not constitute use of the trade mark.
In general, the public will assume this connection. This also applies for
character merchandise articles.
ECJ, 27 November 2008, Intel / Intelmark
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It is not sufficient that the earlier mark is merely ‘brought to mind’ to
justify the invalidity of a later trademark.
Two-stage test for the protection of marks with a reputation:
 firstly, there must be a ‘link’ between the two marks, and
 secondly damage or a likelihood of damage must result from use of
the later mark. This damage must result from either the taking of
unfair advantage or damage to the distinctive character or
reputation of the earlier mark.
 The ECJ listed non-exhaustive relevant factors for assessing the
existence of a link
Relevant decision after Intel/Intelmark
 District Court of The Hague, 14 December
2008, G-Star / PepsiCo
District Court of The Hague, 14 December
2008, G-Star / PepsiCo
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PepsiCo produces a coke under the name PEPSI RAW, containing
natural ingredients.
G-Star has been selling clothing for more than 10 years under the
name GSTAR RAW.
G-Star alleges that PepsiCo profits from the goodwill of its trade mark
and demands an injunction.
The District Court held that there is a high threshold for proof of dilution
of a trademark and dismissed the claim.
District Court of The Hague, 14 December
2008, G-Star / PepsiCo
On examining whether the concerned trade mark should be regarded as a
famous trade mark, the Court considers:
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It is uncertain whether the fact that G-Star Raw is well known in a
relatively small Member-State as the Netherlands is sufficient to deduct
that it constutes a well known trademark on de ground of 9(1) under c.
The word RAW is a generic term in English without any distinctiveness.
It is not a unique sign such as Intel.
In this case the ‘strict criteria’ as set out in Intel have not been met
ECJ, 18 June 2009, L’Oréal / Bellure
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L'Oreal was concerned with companies selling "smell-alike" perfumes
to the top perfume brands. They were marketed by the use of similar
packaging and the use of comparison lists which matched a smell-alike
with the top brand. Thus, it would be said that X smells like Trésor by
L’Oréal.
The use of trade marks in a price and product comparison list can
constitute infringement of those registered marks under Article 5(1)(a),
even if the essential function of the trademark (the source identifying
function) is not harmed, provided that one of the other trade mark
functions is harmed;
The fact that consumers do not have the impression that the infringing
goods originate from the brand owner could not lead to a different
conclusion.
DC The Hague, 4 September 2009, Formula
One Licensing
Formula One Licensing (FOL) claims that using Fone1 by defendant infringes its
trade name, trade mark and domain name rights. Defendant (left) uses a logo
for energy drinks that is similar to the logo of FOL (right).
The trade mark of FOL is a well known trademark and has a good reputation.
According to the Court the logo’s are similar and despite the different goods
and services, the public will associate the logo of the defendant with the trade
mark of FOL.
DC The Hague, 4 September 2009,
Formula One Licensing
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To examine whether defendant takes unjustified advantage of the reputation
of the F1 trade mark, all relevant factors must be considered, including the
strength of the mark’s reputation and the degree of distinctive character, the
degree of similarity between the marks, the nature and degree of proximity of
the goods or services concerned and any likelihood of dilution of the mark.
(L’Oréal/ Bellure)
In examining these criteria, the Court rules that the average consumer will
establish a link between the logo and the F1-trade mark. As to the attractive
image of the F1-trade mark, the Court held that it is likely that this affects the
economic behavior of the consumer, who will consider the energy drink of
defendant more attractive.
Defendant gains unjustified advantage of the reputation of the famous trade
mark, without having a valid reason.
Any questions?
Tjeerd Overdijk
Vondst Advocaten
Van Leijenberghlaan 199
1082 GG Amsterdam
The Netherlands
t: + 31 20 504 20 00
f: + 31 20 504 20 10
e: [email protected]