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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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No Lolly for Chupa Tolly against Chupa Chups

Perfetti Van Melle S.p.A., world's largest candy producer, incorporated the Spanish company Chupa Chups S.A. in July 2006. Chupa Chups is a trade mark which has been used for 46 years for a large assortment of lollies. These lollies are sold throughout the world and generate millions of euros a year. Around 1,500 jobs are involved in the production and sale of the Chupa Chups. The Chupa Chups logo was designed in 1969 by Salvador Dali.

The Chupa Chups trade marks were transferred to Perfetti Van Melle on the occasion of the incorporation of Chupa Chups S.A. According Perfetti Van Melle the Chupa Chups trade marks have a strong inherent distinctive character and have acquired a very large scope of protection due to extensive long and large-scale use. The trade marks should be regarded as well-known trade marks as protected by Article 9(1)(c) of the Community Trade Mark Regulation and Article 2.20(1)(c) of the Benelux Treaty on Intellectual Property. Children are a substantial part of the target group. The reputation of the Chupa Chups trade marks is for a signifanct part determined by the cheerful and innocent appearance of the trade marks.

According to an application for a so-called ex parte injunction of Perfetti Van Melle S.p.A., upon which was decided today by the Presiding Judge of the District Court of The Hague, the Dutch company Mulder & Schneider B.V., infringed the Chupa Chups trade marks, by using, very prominently, an adaptation of the Chupa Chups trade mark on the porn site http://www.chupatolly.com/. The adapation is identical in so far as the design, colours and type(face) are concerned. The only difference is the use of 'Chupa Tolly' instead of 'Chupa Chups'. The infringing sign is flanked by two ladies, of which one sucks a lolly.

Since this is an obvious infringement, which can be very damaging for the Chupa Chups trade mark, Perfetti Van Melle S.p.A. asked the Presiding Judge for an ex parte order to stop the infringement. Perfetti Van Melle argued that an infringement like this one is one of the most serious ones that she might experience, since every association of a trade mark used for children's products with porn sites is extraordinary damaging for the reputation of the trade mark.

The justification for the ex parte provision is that even Dutch summary proceedings practice takes too long to stop activities as involved in this case. Before an injuction in summary proceedings is granted several weeks will go by. During those weeks a lot of visitors will surf to the website where the infringing sign can be viewed.

The Presiding Judge allowed the request in so far as it is based on the figurative Chupa Chups trade marks. Mulder & Schneider was ordered to refrain from the alleged infringing use of the trade mark, especially the use of the logo 'Chupa Tolly', within 24 hours after the service of the decision of the Presiding Judge to Mulder & Schneider. Furthermore Mulder & Schneider was ordered to pay a penalty of €5,000 for each day or a part of a day included that Mulder & Schneider act contrary to the injuction.

The Presiding Judge determined that Perfetti Van Melle should start proceedings on the merits within 6 months after the decision of today. Perfetti Van Melle was ordered to have the decision of the Presiding Judge and the exhibits that were part of the request served to Mulder & Schneider today at the latest. In case Mulder & Schneider would like to lift the injunction the Presiding Judge determines that the Presiding Judge has reserved time to deal with this matter on 5 March 2008, 2pm, in which case Mulder & Schneider should serve a writ of summons to Perfetti Van Melle S.A. before 28 February, 2008, 2pm.

Posted by: Gino Van Roeyen @ 13.11
Tags: Benelux trade marks, ex parte injunction, trade mark infringement,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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