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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THURSDAY, 17 SEPTEMBER 2009
So...? Kiss Me (Not In Court)
Posted by: Gino Van Roeyen @ 15.47
community trade mark, Netherlands, perfume,
On Tuesday 4 Procter & Gamble (P&G) companies (three of them located in the Netherlands and one in Switzerland) won a trade mark infringement case – summary proceedings - before the Presiding Judge of the District Court of The Hague (G.R.B. van Peursem). Plaintiffs Debonair (a Madeira based company) and Incos Limited (based in the UK and licensee of Debonair) argued that the defendants infringed Debonair’s trade mark rights due to the use of ‘Naomi Campbell Cat Deluxe With Kisses’ cosmetic products. Debonair is the owner of CTM 004243713 depicting a lipstick kiss print and uses the trade mark on its ‘SO…?’, ‘SO…? KISS ME?’and ‘SO…? KISS ME ALL OVER’ products (perfumes and related products) with which she aims at young wives and teenagers.
P&G used all defense possibilities available to overcome the trade mark infringement claims of Debonair: it had not only started invalidity proceedings before OHIM, but also filed a request for revocation based on lack of use. Furthermore P&G had started proceedings on the merits requesting a declaration that P&G did not infringe the trade mark rights of Debonair. The case has also elements of copyright and passing off but I leave those issues aside and concentrate on the trade mark part.
P&G had filed a market research report in the summary proceedings to prove – to be very short – that the relevant consumers did not recognise the kiss trade mark of Debonair as a trade mark and furthermore did not connect the Naomi Campbell Kisses products with that of Debonair. Next to that P&G filed evidence of packaging on which competitors also used kisses as an ornament. Debonair argued that she had started trade mark infringement proceedings against two of those competitors and that she was on the edge reaching a settlement with one of them.
First of all the Presiding Judge had to take care of the preliminary defense of P&G that the Presiding Judge had no jurisdiction with regard to the Swiss based P&G company – P&G Prestige BeautÚ - because – according to P&G - that company had only activities outside the Netherlands. Since that company is not based in the EU according to art. 97 par. 2 of the CTMR the infringement claim should be started in Portugal – the country where Debonair is based – being the country where the plaintiff is based. According to art. 97 par. 5 CTMR a decision in favour of Debonair should be limited in its effects to the Netherlands. To make its jurisdiction defense complete P&G argued that the Presiding Judge had no jurisdiction with regard to the Dutch based P&G companies (P&G Nederland and P&G Professional Care).
Taking recourse to the ECJ’s decision in the Somafer case (case C-33/78) Debonair argued that she was forced to go forward against the 4 P&G companies together since it was not clear what the responsibilities of each company were and that Dutch based P&G Nederland should be regarded as a sort of branch of P&G Prestige BeautÚ, while Dutch based P&G Prestige Products should be seen as an extension of P&G Prestige BeautÚ, amongst others while they almost have the same name.
The Presiding Judge establishes as a general principle that the statements of the plaintiff in the writ of summons are decisive for the jurisdiction question. On that ground only the Presiding Judge overrules the jurisdiction defense of P&G that P&G Nederland and P&G Professional Care, contrary to what Debonair argued, do not have any activities in the perfume area. The Presiding Judge establishes furthermore that the Presiding Judge has no jurisdiction over the Swiss based P&G company as far as the Debonair claims are based on its trade mark. The basis for jurisdiction with regard to the Dutch based P&G companies finds the Presiding Judge in art. 97 par. 1 of the CTMR, because these defendants are based in the Netherlands. The Presiding Judge of the District Court The Hague has in such a case exclusive jurisdiction.
With regard to the trade mark infringement claim on itself the Presiding Judge qualifies P&G use of a lickstick kiss as ornamental use referring to the ECJ’s Adidas cases (Adidas/Fitnessworld and Adidas/Marca and H&M). The Presiding Judge decides that it has not been proven that the relevant public observes the P&G kiss as a trade mark. In this respect the Presiding Judge follows to a certain extent the observations in P&G market survey. Furthermore the Presiding Judge takes into account – weighs – that the trade mark is found to have a limited distinctive character, that similar signs are used by third parties too, that the level of similarity between the trade mark and the sign is low due to the use by P&G of Naomi Campbells name and the sign ‘Cat Deluxe’. Moreover the Presiding Judge finds no risk of confusion (even you would take the similarity hurdle). According to the Presiding Judge a great similarity between the trade mark and the sign is needed since kissing lips signs are used a lot in the perfume business as an ornament. The Presiding Judge finds backing for this finding in the market survey that the public does not connect the P&G sign with the trade mark at all.
Last but not least the Presiding Judge finds that there is no trade mark infringement according to art. 9 par. 1 sub b CTMR due to the fact that P&G uses the lipstick kiss sign only in connection with its Cat Deluxe sing and Naomi Campbell’s name and/or a picture of Naomi Campbell. This combined designation is qualified by the Presiding Judge as quite well known due to the sales of the P&G products and the celibrity that Naomi Cambell is in the relevant circles of the public.
Art. 9 par. 1 sub a CTMR could not be used as a basis for Debonair’s claim since that provision can only be applied in cases where the similarity between a trade mark and a sign is so high that they are almost identical. Art. 9 par. 1 sub c CTMR failed could not be invoked since the Presiding Judge found that the trade mark was not well known.
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