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WEDNESDAY, 20 JULY 2011
Turn Down The Bass
The Presiding Judge of the District Court Amsterdam (W. Tonkens-Gerkema)
turned down the bass in summary proceedings (decision of June 24, 2011) for
Dutch companies The All Blacks B.V., CNR Music B.V. and Therapist Music B.V. by
denying them protection for the trademarked slogan 'Turn Up The Bass' -
trademarked in the Benelux in 2001 by The All Blacks and licensed to CNR Music
and Therapist Music - against Radio 538 B.V., who used the slogan 'Turn Up The
Beach' by Radio 538 B.V. for a dance party on the IJmuiden beach on July 9,
2011. Radio 538 itself had registered 'Turn Up The Beach' as a trade mark in
First of all the Presiding Judge in advance held it likely
that the trade mark 'Turn Up The Bass' could be invalidated in proceedings on
the merits, because 'Turn Up The Bass' does not function as an indication of
origin and furthermore because the relevant public will not conceive 'Turn Up
The Bass' as an indication for particular goods or services. Furthermore the
Presiding Judge held that 'Turn Up The Bass' had not become distinctive by use.
For the decision that 'Turn Up The Bass' is not a trade mark
as such, but at the most a descriptive slogan, that the relevant public links
with a musical movement from a certain period (around 1988-1993), the Presiding
Judge relied on copies of flyers relating to Turn Up The Bass events filed by
plaintiffs as evidence of the use of 'Turn Up The Bass'. Besides 'Turn Up The
Bass' the flyers contained slogans like ' Pump Up The Jam', 'Can You Feel It'
and ' Show Me Love'. The Presiding Judge considered that generally consumers
are not used to derive the origin of goods or services from such slogans.
That 'Turn Up The Bass' had become distinctive by use, as
argued by plaintiffs, could not be derived from the evidence of use filed by
them (amongst others evidence of consistent and frequent use of 'Turn Up The
Bass' for a compilation CD series and events in the period 1989-1993). The
Presiding Judge took into account that 'Turn Up The Bass' - as could be derived
from exhibits filed by Radio 538 - was used for almost twenty years by a lot of
persons and companies for cd or song titles or within the framework of parties
and events. One of the exhibits of Radio 538 was a large collection of tweets
in which 'Turn Up The Bass' was used as a reference to dance music in general
and not as an indication for the goods and services of plaintiffs. Radio 538
furthermore filed images of a large amount of cd's with the words 'Turn Up The
Bass' in the title, as well as a list of cd's with 'Turn Up The ...' (Reggae, Music, Volume) in the title. Also
a list of events - not organised by plaintiffs - for which the words 'Turn Up
The Bass' (and similar names like Re-Turn Up The Bass, Turn Up The Bass
Tribute) were used was exhibited by Radio 538. One of these events organised in the past was eventually named
'Turn Up The Beach'.
According to the Presiding Judge plaintiffs had also failed
to prove that they had used the trade mark consistent and frequent in the
period 1993 to 2008. The Presiding Judge held that the amount of events
organised by plaintiffs paled into insignificance compared to the large amount
of other 'Turn Up The Bass' events (or events that use a similar slogan)
exhibited by Radio 538.
There was no evidence or at least not enough convincing evidence that plaintiffs had acted against the 'Turn Up The Bass' cd's and
events not originating from plaintiff. Accordingly the Presiding Judge decided
that in proceedings on the merits a court might rather conclude that the slogan
has become generic, instead of distinctive by use. The Presiding Judge
clarified in this respect that even in a radioshow of one of the plaintiffs
(and its owner) and for events organised by them, for which 'Turn Up The Bass'
was used, the relevant public could not see nor know that this was use of the
trade mark of The All Blacks.
Posted by: Gino Van Roeyen @ 21.02
Netherlands, slogan, distinctiveness, generic,
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