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Who Picked My Puck?.. Pardon, Cheese
Victory today for Danish Arla Foods before the Presiding Judge of the District Court The Hague (G.R.B. van Peursem) in summary proceedings against well known Dutch cheese producer Th. Vergeer en Zonen. Arla is the owner of CTM's for 'Puck' as a word mark and for the figurative 'Puck' trade marks depicted alongside. The trade marks are registered for milk and milk products. The Puck trade marks are used for a goat cheese and cream cheese variant which are especially popular in the Arabic world and amongst people in Europe with Arabic roots.
Vergeer markets a cheese product for children in the Netherlands, Germany and Hungary using the sign 'Cheez'Pucks' and a character (mascot) named 'Puk' or 'Puck', the result of competition within Vergeer's company. The cheese product is packed in a small net containing six pieces of 20 gram each and is disc-shaped like a puck. Vergeer has registered the domain name 'cheezpucks.nl' with which it operates the website http://www.cheezpucks.nl/. Vergeer also advertises the products on a few pages of its company website http://www.vergeer.nl/. On the children's television network Jetix Vergeer conducted an advertising campaign.
Did Vergeer infringe Arla's trade mark rights by these acts? Or is Vergeer's use of Pu(c)k a pure descriptive one to which Arla can not oppose with its trade mark rights?
The Presiding Judge decides - postulating that Vergeer uses the sign Cheez'pucks to distinguish its cheese product and therefore as trade mark for a product identical to the one for which Arla registered its Puck trade marks - that Vergeer acts contrary to art. 9 par. 1 sub b CTMR. Puck and Cheez'Pucks are similar to the Puck trade marks, as a result of which the public can be (indirectly) confused. What should be considered in this regard is whether the trade mark as registered and the signs used, considered globally according to their entirity, show such an auditive, visual or conceptual resemblance, that it raises confusion for the public (the consumer as defined in Gut Springenheide) with regard to the trade mark and the signs (direct confusion) or with regard to the owners of the trade mark and the user of the signs, in that the public believes that there is a link between them (indirect confusion). All relevant circumstances should be taken into account when applying this standard and elements of similarity should be paid more attention then differences.
Since Arla is found to have succeeded in its argument that the sign Cheez' is a usual and pure descriptive sign for a cheesy taste or a cheese product (Arla showed packages of CheezWhizz - a cheese sauce or cheese spray; Cheez-it or Cheez-it for strips of cheese; and Cheez-doodles for salted crisps with a cheese taste - the Presiding Judge considers Cheez' to be a corruption for the English word cheese) the Puck element is found to be decisive, which is obvious of course for the signs Puk and Puck. Besides that - according to the Presiding Judge - a lesser measure of resemblance between trade mark and signs can be compensated by a high measure of resemblance between the goods (cheese is cheese). The Cheez and added 's' do not take away the auditive and visual resemblance. The Presiding Judge considers in this regard that this might be a little less evident with regard to the contraction Cheez'pucks, but 'this is not relevant for trade mark law considerations'. That pu(c)k in the Arabic language might sound like book doesn't make a difference, because Arabic is not a language which is usually understood in the EC. Furthermore the Presiding Judge can not see how this could take away the resemblance. There might even be a conceptual resemblance if puck could be considered as synonymous with disc-shaped. And last but not least: even only an auditive similarity might be enough.
The Presiding Judge does not follow Vergeer's argument that the sign Cheez'pucks is only used in a descriptive way: 'The sign elements pucks or Pu(c)k are descriptive for ice-hockey, but not for pieces of cheese'.
The finding of - at least - indirect confusion is based - in the first place - on the fact that Arla is not obliged yet to use the CTM's (art. 15 par. 1 CTMR). Furthermore the confusion test needs a more or less abstractive approach: a concrete occurence of confusion should not be shown.
The trade mark infringement injuction is based on the word mark CTM. Furthermore the Presiding Judge orders Vergeer to transfer the domain name cheezpucks.nl to Arla, because the sign cheezpucks in the domain name is used as a trade mark, namely to distinguish the products that are offered on the website behind the domain name (there is a direct connection between the domain name and the offered products, for example in the banner 'Cheez'pucks. hèt kaasje voor coole kids' (Cheez'pucks. the little cheese for cool kids).
With regard to the procedural costs the Presiding Judge follows the lines set forth in the scale of liquidated costs applicable since August 1, 2008 in the Netherlands. Arla is found to be entitled to a compensation of € 15,000. It had claimed € 16,741.59 but the Presiding Judge followed the scale of liquidated costs and overruled Arla's thesis that this scale is based 'op niets' (on nothing) and is a 'slag in de lucht' (lies in the dark), because it is laid down by the LOVC (the Consultation Group of Court Presidents in civil cases in the Netherlands) after preparation in a working group instituted by the LOVC and completion in dialogue with the Dutch Bar Association.
Tags: Benelux case law, community trade mark,
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