Recent developments in Dutch trade mark law London, October 5, 2009 Tjeerd Overdijk Vondst Advocaten Van Leijenberghlaan GG Amsterdam The Netherlands t: f: e: /

SC 26 June 2009, Pinocchio / Jaguar -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 , Frenko filed application for BNL trademark for goods of classification11 ( efrigirators and deepfreezers): This sign is identical to Frigor’s Benelux TM dated : These marks co-existed for over 15 years until 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  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

 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’.

Questions to the ECJ  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

 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 12 December 2008 Portakabin/Primakabin

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.

Questions to the ECJ  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? SC 11 July 2008, Makro/Diesel

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  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  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  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:  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  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  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 GG Amsterdam The Netherlands t: f: e: