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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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Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
What happened in the Netherlands during my summer holidays (August 18 - September 5, 2008)?

Our friends over here at Boek9 hired an interiour decorator to refurbish the website according the Dutch design standards. Congratulations!

Travelling to Beaune it escaped my attention - although I heard some rumours - that the Dutch Olympic Association - owner in the Benelux of the registered trademark 'Olympisch' (Olympic) was troubled by certain 'toetjes' (desserts) of well-known Dutch manufacturer Mona, the so called 'Olympic Games Pudding', introduced by Mona in its series 'Toetje van de Maand' (Dessert of the Month). Of course the proof must have been in eating the pudding, which I didn't, but 'the case' must have dissappeared into the cellars of confidential negotiations between the parties. Bas Kist (ShieldMark.Zacco) wrote an interesting helicopter view article on August 21, 2008 in NRC Handelsblad with regard to the watch-dog position of the Dutch Olympic Association with regard to the protection of its trade marks, mentioning the pudding case.

In the southern part of France - near Ramatuelle - I enjoyed the sun, the sea and the landscape (amongst others) and missed during the next days futhermore:

- the scoop of Dutch paper De Telegraaf that C&A- owned by the Brenninkmeijer family - apparently fights fashion entrepeneur Alex Brenninkmeijer' use of 'Clemens en August' (Clemens and August) - christian names of the founding fathers of C&A - for clothing before courts in Germany, Switzerland and the UK.
- that the Presiding Judge of the District Court in The Hague (P.H. Blok) in summary proceedings ordered a miss Nihot not to infringe a copyright owned by Belgian company Alpex with regard to a logo showing a dog and a cat using a towel and the description 'Pet-Towel'. Alpex sold towels for pets using the logo which were imported in the Netherlands by miss Nihot. Miss Nihot registered the logo as a trade mark in the Benelux in 1996. In 2007 she bought towels from a third party and used the logo on these towels. Alpex opposed thise use arguing that miss Nihot infringed the copyright in the logo. The Presiding Judge agreed with Alpex, found that miss Nihot was not entitled on any grounds to use the logo on third party products, considered that the trade mark registration by miss Nihot might be a bad faith one and concluded that the registration of the logo as a trade mark does not strike out Alpex copyright claims (Decision August 20, 2008).

- that the Presiding Judge of the District Court Arnhem (M.J. Blaisse) decided that EBW Elektrotechniek B.V. infringed a figurative trade mark of EBW Installatietechniek BV., by using the trade name EBW Elektrotechniek. The dominant part of the figurative trade mark was 'EBW'. According to the Presiding Judge the differences between the trade mark and the tradename do not count. The Presiding Judge is of the opinion that the non-attentive public is decisive for establishing confusion (Decision August 21, 2008).

- that the Opposition Division of the Benelux Office for Intellectual Property published its first newsflash on August 26, 2008, concerning its hundreth opposition decision in a case between the TROS (a Dutch broadcasting company) as opponent and a mr. Voorheijen, who registered the trade mark 'Op Volle Toeren' (Dutch slang for on full speed or something the like). 'Op Volle Toeren' used to be a popular TROS television music show (together with another one named 'Op Losse Groeven' - freely translatable as ' On Loose Grooves'). Voorheijen claims to be the inventor of the programs and argued without success that he has older trade mark rights and that TROS invokes a bad faith trade mark registration for 'Op Volle Toeren'. Furthermore Voorheijen refers to a license agreement between the parties with an apparant explicit recognition by the TROS that Voorheijen is the owner of the trade mark right with regard to 'Op Volle Toeren'. The Opposition Division however decides that these circumstances should not be taken into account in the proceedings: what counts is the risk of confusion and only the risk of confusion. Because the trade marks are identical and the involved services partial identical and partial similar, the Division finds that the relevant public might come the conclusion that there is a connection between the parties and that there is a risk of confusion. Accordingly the TROS wins the opposition.

- that the Presiding Judge of the District Court in The Hague (P.H. Blok) ruled in favour of Dutch company Nedac Sorbo B.V. in a case against the Danish company Vital Petfood Group A/S (VPG). Both parties are animal feed manufacturers. VPG sells private label products, amongst others in Scandinavia and uses the word mark BEST FRIEND. Since 2001 VPG also uses a BEST FRIEND LOGO as a - non registered - trade mark (the world element in white letter placed in the middle of a circular red coloured sign). VPG is owner of a Benelux word mark registration for BEST FRIENDS (July 20, 1999), and two CTM's for the word mark BEST FRIEND (September 17, 2001 and May 27, 2002). Nedac Sorbo owns the following trade mark registrations: a Benelux trade mark registration regarding the figurative sign 'NEDAC SORBO BEST FOR YOUR FRIEND' (December 17, 1998), a CTM for another blue coloured figurative sign 'NEDAC SORBO BEST FOR YOUR FRIEND' (November 24, 2005) and a Benelux trade mark registration for again another - red coloured - figurative sign 'NEDAC SORBO BEST FOR YOU FRIEND' (June 27, 2007). Nedac claimed an injunction not only against the trade marks for which VPG owned trade mark registration, but also against the use of VPG non-registered logo. Quite surprisingly - I would say - VPG did not argue - not even after a specific question about this issue from the Presiding Judge at the hearing - that VPG's CTM's pre-dated Nedac's 2005 and 2007 trade mark registrations. What's more: VGP declared at the hearing that the validity of the Nedac trade marks was not an issue in the summary proceedings. Accordingly the Presiding Judge was in a position to assume that the Nedac trade marks were valid and take Nedac youngest trade mark registration (2007) that - on first sight - resembles VPG's logo most as a starting point. The Presiding Judge finds that their is a risk of confusion as far as the 2007 trade mark registration and the logo are concerned, walking the classic tracks. The differences between the trade mark and the logo are considered to be not strong enough to outweigh the similarities, looking at the overall picture. In other words: there is a risk of confusion and an infringement. Furthermore the Presiding Judge decided that Nedac did not forfeit its rights: art. 53 par. 2 CTR - and art. 2.24 Benelux IP Treaty - were not applicable on formal grounds, because in this case Nedac's claim is from a formal point of view based on a younger trade mark registration (2007). Neither could VPG rely on art. 6:2 Dutch Civil Code. This article safeguards in relationships between a creditor and a debtor that a rule which governs such a relationship pursuant to law, custom or legal act, shall not apply in so far as this in the circumstances of a case according to criteria of reasonableness and fairness unacceptable. The Presiding Judge finds that Nedac has not given rise to a legitimate expectation on VPG's side that Nedac would not invoke its trade mark right. Nedac has not tolerated VPG's use of the logo in the Benelux for many years. Interesting in this respect is that the Presiding Judge diffentiates between use of the logo on exhibitions of private label manufacturers in the past and a later, new kind of use in a different market (consumer market). Use of the logo on exhibitions of private label manufacturers differs from use in the consumer market because the first use does not harm the main function of the Nedac trade mark (safeguard the identity of origin of the goods). That is not or nearly not an issue if a third party uses a sign similar to the trade mark as part of a presentation of the goods to traders or middelmen who sell the goods using their own trade mark.

On September 3, 2008 - back in Beaune after a stop over in Avignon - the District Court Groningen (P.J.W.M. Vermeulen) ruled in favour of G.H. Fraas B.V. in proceedings on the merits in a case against Storteboom Kornhorn B.V., concerning infringement by Storteboom of Fraas' figurative trade marks 'OLYMPIA LUXUS HÄNCHEN' (registered in the Benelux in 1995) and 'OLYMPIA PREMIUM QUALITY CHICKEN' (registered in the Benelux in 1999) in classes 29, 35 and 39. The word Olympia is surrounded by rings. Storteboom - a company active in the field of poultry slaughtering and processing, and im- and export of poultry - used the connotation 'Olympia Luxus Hänchen' on packaging, and a figurative sign with the word element 'Olympia' surrounded by a mountain. The products were exported to Greece. The proceedings had a history because the parties had been fighting the case already in two summary proceedings before the Presiding Judge of the District Court (round 1) and in appeal before the Court of Appeal Leeuwarden (round 2). The Presiding Judge had already decided that Storteboom infringed the Fraas' trademarks, but this decision ceased to have effect, because Fraas did not start the summary proceedings within the time limit set forth in the decision. Storteboom filed a declaration to this end at the court registry after which the decision became ineffective. Fraas started a new summary proceeding but did not succeed, neither in appeal. Thus a procedure on the merits became necessary. The District Court shows no mercy for Storteboom: by using 'Olympia Luxus Hänchen' and the 'Olympia-Mountain' sign Storteboom infringed the Fraas' trade marks. The average consumer who wants to buy an 'olympia-chicken-product' shall not indicate whether it should be a product with on the packaging a composition of rings or one with a mountain. It is more likely that due to the prominent use of 'Olympia' on the packaging the average consumer shall consider the rings or mountain as detail/frills and not as a specific element decisive for the origin of the product. Furthermore the District Court comes to the ocnclusion that the public in the Benelux is the relevant one and not the Greek public as Fraas had argued. The District Court comes to this conclusion because art. 2.20 lid 2 c of the Benelux IP Treaty (specifying which particular acts of use are enclosed in the exclusive right of the trade mark owner) covers explicitly the export of goods using the sign. Because Storteboom affixed the mountain sing on the packaging and exports the goods to Greece, and because export (outside the Benelux) is an act of trade mark use, the relevant public is the Greek public and not the public in the Benelux.

Posted by: Gino Van Roeyen @ 20.38
Tags: Bas Kist, Benelux case law, Best Friend, boek9, C and A, EBW, Olympia, Olympics, Op Volle Toeren, Pet-Towel,
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