Breach of trademark and/or brand: what are the criteria?
How does the Dutch court view whether someone else’s trade name or logo appears to be too similar to your trade name and/or brand? Attorney Hidde Reitsma discusses this based on a recent lawsuit brought by Loods 5 against a company called Loods G.
Dispute: use of trade name and logo
Loods 5 believed that Loods G had infringed upon its registered trademark (logo), along with its word mark and trade name. Therefore, the attorney for Loods 5 summoned Loods G in interim proceedings, demanding stoppage of the use of Loods G as a trade name and brand, including its use as a domain name. Loods G had already stopped using its logo prior to the proceedings. Since Loods G had also not signed any waiver, the appeals court ruled that Loods 5 also had an interest in a decision on this issue.
Criterion for trademark infringement: confusion
Trademark infringement is considered to exist if the logo and brand correspond to such an extent that confusion can arise on the part of the eligible audience for the particular goods or services (directly or indirectly). This risk of confusion must be evaluated globally according to the impression that the logo and brand make on the average consumers of the goods or services involved.
Risk of confusion: total impression is what’s important
The global evaluation of the risk of confusion must be based on the total impression made by the brands, in which the distinctive and dominating components, in particular, must be taken into account. The brand’s distinctive capability must also be taken into account. The risk of confusion can be said to be more prevalent depending on the degree to which the goods or services are more similar (in terms of type).
Court: no infraction of trademark/logo and word mark
The court found that the fonts used in the logos for Loods 5 and Loods G were dissimilar; the different placement of the word marks used and a different drawing on the logo used also made them dissimilar. Furthermore, the court found that the shapes differ considerably. The court considered the purported similarity between the number “5” and the letter “G” to be so only to a limited extent.
Risk of confusion amoung the public
Further, the court established that the component “Loods” is often used for the sale of various items in varying combinations of numbers and letters. In addition, the goods that are purchased by parties can be considered to be “similar” only to a limited degree. Loods G is more of a “thrift shop” and Loods 5 is a store with “new products and design products”. According to the appeals court, the presumption was insufficiently demonstrated that there would be a risk of confusion among the relevant public. There was also no question of “slipstreaming” the Loods 5 brand in order to profit from this, since those claims were not substantiated in any manner whatsoever and were disputed by Loods G.
When does trademark infringement occur?
Article 5 of the Trademark Act states that it is forbidden to use a trade name that has already been rightfully used as a trade name by another enterprise, or to use a trade name which differs from that party’s trade name only to a slight degree, such that the consequences of which use, in connection with the nature of both enterprises and their locations, might be considered to cause confusion among the public about those enterprises.
Breach of trademark: Trademark Act
Considering the nature of the enterprises, in which importance is assigned to the difference between the goods offered by Loods 5 and those offered by Loods G, it is implausible that confusion might be caused among the public. Even though the Loods G website can be consulted from throughout the country, it was insufficiently demonstrated that this was an attempt to acquire customers from throughout the country and the domain name does not contribute substantially to the familiarity with the trademark beyond its own catchment area (Groningen). In this regard as well, the court considered it implausible that confusion might be caused among the public. Loods 5’s claim was rejected and Loods 5 was ordered to pay court costs exceeding €6,000.
Trademark issues? Contact AMS lawyers!
If you have any questions about intellectual property law in the Netherlands, please contact AMS Lawyers.