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IP Update ll

The secret weapon of the Benelux trademark registration

Benelux trademark registrations have a huge advantage compared to other, f.i. EU registrations. The Benelux Convention on Intellectual Property (BCIP) provides for additional protection, namely against the use of signs other than as a trademark. As in most trademark law systems, a Benelux trademark owner is able to stop the use of (1) an identical sign for identical/similar goods and/or services, (2) a similar sign for identical/similar goods and/or services if a likelihood of confusion exists and (3) an identical/similar sign without due cause that takes unfair advantage of or is detrimental to the distinctive character or the repute of the trademark that enjoys a reputation in the Benelux territory. Benelux trademark owners are also able to stop the use of a sign ‘for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark.’ In practice, this clause is mainly relied on in cases where the trademark owner tries to stop the use of a trade name (company name), a domain name or use in social media/on internet in general. Often with success. Companies that are on the verge of making a decision as to where to apply for a trademark registration should take this advantage into account.


Expensive portraits

The well-known and talented Dutch Formula 1 driver Max Verstappen earns serious amounts of money with racing. But there is an alternative financial source: his portrait.


Max Verstappen has an exclusive contract with Dutch grocery chain Jumbo and he plays an important role in Jumbo’s advertising campaign. One of Jumbo’s competitors, newcomer Picnic, created a similar (one might say: parodying) commercial. Instead of using Max Verstappen (photo right) in the commercial, Picnic used a lookalike (photo left). The management of Max Verstappen was not amused and filed suit. The court concluded that Picnic infringed Verstappen’s portrait rights. Although the lookalike is not the real portrait of Max Verstappen, Picnic tried to create the image of Max Verstappen without his permission and without paying. That is not allowed. Question now is: how much money does Picnic need to pay to Max Verstappen? Verstappen claimed an amount of € 350.000… Whether the judge will grant this is highly questionable in our opinion.


Trade names: to be descriptive or not

Under Dutch trade name law, contrary to trademark law, also a descriptive name can be a trade name and enjoy protection. However, already for decades and particularly lately there has been debate whether purely descriptive trade names enjoy the same protection as trade names that consist of a non-descriptive sign. The Dutch Trade name Act stipulates that a company can oppose the use of a confusingly similar trade name by a competitor, if said company was the first that started to use the trade name. The law does not make a distinction between descriptive and non-descriptive names.

Almost two years ago the Dutch Supreme Court rendered a decision that – as is more often the case in law – can be interpreted in more than one way. Some believed that this decision ruled that descriptive signs cannot be monopolised and that trade names are therefore not protected against likelihood of confusion per se, whereas others think the Supreme Court did not say that (because the ruling only applied to a domain name not also being a tradename). Anyhow, one of the most important Dutch IP Courts, The Hague Court of Appeal, recently opted for the non-protective approach in the Parfumswinkel-case (translated: 'perfumes shop'). According to this court, an injunction cannot be based solely upon likelihood of confusion in case of a descriptive trade name; there should be further circumstances that justify such injunction. Bad times for descriptive trade names now. Let us hope that this Parfumswinkel-case will also go to the Supreme Court and that the Supreme Court will now for once and for all clarify the position of descriptive trade names.


Contentious issues of joint ownership

Two producers of organisers decided to cooperate and develop the Organizing Agenda which was first sold for the year 2011. In 2017, after already having the agenda 2018 ready, they ended their cooperation. Bad timing: not surprisingly both parties wished to sell the agenda for 2018 and both claimed they owned the copyrights in the agenda. To stop the other from doing the same, they both filed an injunction action against the other in preliminary injunction proceedings.

Although the parties had their own agenda designs before 2011, the agendas that were designed in cooperation showed design characteristics from the previous agendas of both. Since parties had not made any arrangements with regard to the rights in the mutually designed and produced agendas, the judge decided that the parties co-owned the copyrights in these agendas, hence also in the agenda 2018. As a result, neither party could prohibit the other party to produce and sell the agenda. So if you are still looking for a Dutch paper organiser, 2018 may be a good year.


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