C h i e v e r Q u a r t e r l y R e v i e w c o n t a i n s a n o v e r v i e w o f s t r i k i n g , i n t e r e s t i n g a n d e n t e r t a i n i n g c a s e s a b o u t t r a d e m a r k s , c o p y r i g h t , d e s i g n s a n d t r a d e n a m e s

Q U A R T E R L Y R E V I E W

Vo

lum

e 3 no. 6 - 2016

Duvel comes a cropper in BelgiumDuvel comes a cropper in Belgium

In this issue:Lindsay Lohan vs GTAV

BMW Hyde Park deemed misleading

No more Batmobile replic as

Bar set low for Bavaria

Results of the 2015 Chiever Letterquiz P h o t o : w w w. b i e r n e t . n l

I N T H E S P O T L I G H T

1

Duvel loses to Filou

Unfair trade practicesOddly enough, Moortgat didn’t claim in-fringement of its trade mark rights, only ‘unfair trade practices’ as defined in the Belgian Code of Economic Law.

‘Little devil’Despite the strong resemblance between both bottles and the fact that the word ‘filou’ also apparently means ‘imp’ or ‘little devil’, the court wasn’t inclined to ban the BVH beer.

Shape and ‘devil’ brandsOne decisive factor in the court’s decision was that the shape of the bottle is already used for other speciality beers in Belgium, and that several beer brands also have names relating to devils (Duivels Bier, Satan, Judas and Lucifer).

No image exploitationThe style of the label featuring a white background, red letters and a figurative element, was also felt to be insufficiently distinctive and shared with other brands. As a result, the court concluded that BHV could not be regarded as exploiting Du-vel’s image. The fact that the campaign to promote Filou showed a boy with

a forked tail wasmerely a wink inthe direction ofDuvel and couldnot be given legalweight, the courtsaid.

Why no trade mark registrationfor the bottle as a whole?You could ask why Moortgat didn’t claim a trade mark registration of the total pack-aging of the bottle and label together.After all, while the shape of the bottle

might not be distinctive, we believe that this shape could still play a role when considering trade mark infringement and the risk of confusing the two brands. Whether such an argument would be enough to satisfy the court is unclear, but one thing’s for sure: if you don’t try, you won’t succeed.

Moortgat, the Belgian producer of Duvel beer, has failed in its bid toprevent family-owned brewer BVH marketing its speciality beer Filou. On 17 March, the district court in Brussels ruled that Filou had notinfringed Duvel’s rights.

There are lots of devilishbrands available on the Belgianbeer market.

The bottle shape with white label and red letters is commonly used.

2

- - - - - - - - - - - - C H I E V E R B R A N D P R O T E C T I O N - - - - - - - - - - - - -

Lindsay Lohan takes on GTAV

The Supreme Court in New York has informed US actress Lindsay Lohanthat she can resume her case against Take Two, makers of the video gameGrand Theft Auto V (GTAV).

China runs short of paperYou’ll have to be patient if you want to have your trade mark registered in China.

That’s because for the last six months, the Chinese Trade Mark Office hasn’t had enough paper to print out the registration certificates, according to a statement from the Chinese Minis-try of Finance. However, they finally appear to have found a supplier. Now let’s hope they don’t run out of ink.

The Comité Interprofessionnel Du Vin de Champagne,which represents Champagne producers, has been unsuccessful in keeping the children’s beverage Champinout of the Spanish market.

Champagne losesout to kiddy drink

Alcohol-free According to a decision released by theSpanish Supreme Court on 7 March, Champin doesn’t threaten thebrand identity of Cham-pagne. The court con-cluded that therewas no

danger consumers would think the Champin bottles contained Cham- pagne or that the two products were in any way related. Another key factor was that Champin, which is alcohol-free, is on sale in the super- markets for a mere 3 euros, and that the bottle it comes in features a clown.

Right of publicityLohan had objected to the game’s inclusion of the character Lacey Jonas, a blonde wom-an who she claims is a look-alike of her which results in the commercial exploitation of her image. She therefore believes Take Two is infringing her right of publicity.Take Two had asked the court to reject the claim on the grounds that GTAV was an artistic work and therefore not covered by right of public-ity. It also argued that Ms Lohan had waited too long before filing her complaint. However, the court ruled that such matters must be de-cided during the case itself and that the issue would shortly be considered when proceedings recommenced.

3

Recreate PMS

Fujitsu Chquita

Discovery

Xerox

Pedigree

WhiskasMonster

VodafoneRoyal Canin

KleenexPinterest

Glaxo Smith KlineBic

Ernst & YoungBudweiser

Hardrock CaféCruesli

HertzVisa

Mini Snickers Red Bull Puma Knorr Lamborghini Lipton

- - - C H I E V E R B R A N D P R O T E C T I O N - - -

$ 30 million for Pele?Legendary footballer Pele is demanding 30 million dollars from multinational Samsung for using a look-alike of him in an advert, and has taken the case to the district court in Chicago.

No dealThe issue is a sensitive one, since Samsung previously held discus-sions with Pele about the possible use of his portrait in its commercials, although they never reached an agreement. Clearly the company be-lieves that in the event of a no-deal you can simply use a look-alike.

No Hyde Park for BMW

Many accurate entries for the 2015 Letterquiz

The results of the 2015 Chiever Letterquiz are shown above. The winners of the 100 euro restaurant voucher were Janinke Dekker of TLC Marketing and Niels van der Haven of BNO. Congratulations to both!

BMW has failed to gain acceptance to register its Hyde Park trade mark for cars in Switzerland after a Swiss court ruled that the geographical desig-nation ‘Hyde Park’ could mislead consumers.

London reference like Big BenThe court said that while it accepted that consumers were clearly aware that BMW cars weren’t made in London’s Hyde Park,

Hyde Park was nevertheless an indirect re-ference to London and England, like Big Ben or Trafalgar Square. For that reason, the court concluded that it was a mis-leading trade mark for cars not made in England.

But is an EU trade markSomewhat surprisingly, however, the EU Trade Mark Office did allow BMW to enter ‘Hyde Park’ in the EU trade mark register.

4

Trunki loses againMagmatic, the company behind the highly popular Trunki chil-dren’s suitcase, has lost its ap-peal against the look-alike Kid-dee Case. After challenging an initial ruling by the Court of Ap-peal in the UK, the firm has now lost again in the Supreme Court, which recently concluded that the Kiddee Case does not infringe Magmatic’s European design rights to the Trunki.

DrawingsThe problem lies chiefly in the draw-ings Magmatic submitted with the registration of its design, which de-pict wheels in a contrasting grey-scale. These are not present in the Kiddee Case. The outcome might have been different if Magmatic had registered more neutral drawings. But what’s done is done.

Ban on Batmobile replicas

Bar set low for Bavaria

US citizen Mark Towle has been told to stop making replicas of the Batmo-bile shown in the Batman comics and films. The Supreme Court has ruled that Towle is infringing the copyright of DC Comics, which owns the rights to the Batman brand.

InconsistentTowle, who had been selling the replica cars for approximately 90,000 dollars each,

had accused DC Comics of being inconsis-tent in the way it depicted the Batmobile, claiming the comics had featured more than a hundred different models since 1966. He also argued that under US law, ‘useful items’ such as cars were not pro-tected by copyright.

UniqueHowever, the highest court in the land has now decided that the Batmobile embodies unique and protectable char-acteristics and is therefore covered by copyright.

- - - C H I E V E R B R A N D P R O T E C T I O N - - -

The Kiddee Case features hidden wheels.

On 16 March, a preliminary injunc-tion issued in The Hague gave Bavaria copyright protection for its slogan ‘Zo. Nu eerst’ [First things... First], and concluded that the brewer could institute proceedings against internet firm YourHosting, which has used the slogan ‘Zo. Nu eerst naar de cloud’ [First things... First to the cloud].

OriginalityIn order to be covered by copyright law, a phrase must have some degree of origina-

lity. By affording protection to this rela-tively basic three-word combination, the court has set the bar for originality low. Moreover, the ruling makes it very difficult to predict whether any future slogan will or won’t be accepted. Why, for example, did Dutch courts decide that the slogan ‘Echt, je proeft het’ [Taste the dif- ference] qualified for protection while ‘Het Beste voor Baby’s Billetjes’ [Best for baby’s bottom] did not?

Trade mark lawBavaria also owns a trade mark registration for the phrase ‘Zo. Nu eerst een Bavaria’. It’s a pity the court didn’t also evaluate Bava-ria’s claim to the trade mark; this could have given rise to some interesting conclusions.

Trademark rejected:

KEIZERSGRACHT

THE HAPPY LAWYER

Chiever contact detailsChiever B.V.Barbara Strozzilaan 2011083 HN AmsterdamTel: +31-(0)20-820 40 00Fax: +31-(0)20-820 11 12Mail: info@chiever.comWeb: www.chiever.nl

ConsultantsAlice Slabbaert, partnerBas Kist, partnerVolkert Teding van Berkhout, partnerMaria-Gemma HuijnenAnnette LindemanMiriam den BoogertTineke Westerhuis

Trademark AssistantsDaphne AlthoffMarion de BruijnClementine DoodemanMaria Gómez van GerderJudith IrionNadja JosephMarionne MinKayin PangSylvie PiernazJoke RienksManouk van SantenMarijntje SittersMirjam SteemanEva de Wit

OfficeManon Fock, operations managerFabienne Filbry, ass. manager operationsTessa van de Braak, database manager

© Chiever 20165

- - - C H I E V E R B R A N D P R O T E C T I O N - - -

Chiever advises companies on the national and international protection of their brands, trade

names, copyright and design.

Chiever’s USPsKnowledge and experience

Clear and straightforward advice

Overview and control for the client

Competitive pricing

ChieverBig enough to cope, small enough to care

The latest refused trademark applications

Drawbacks of a weak brand

If a trade mark lacks sufficient distinctive charcter, the Benelux Office for Intellectual Property won’t register it - sometimes justifiably, but sometimes not, in our opinion. Right or wrong, the rules are strict.

US company BBY Solutions, owner of the well-known chain of electronics outlets Best Buy, has failed to halt the EU registration of the similar-looking brand B!g Buy. According to the EU Trade Mark Office Board of Appeal, there’s no danger of confusion between thetwo brands.

Chiever says ...

The word mark Beertaxi is clear enough: beer on delivery. But it doesn’t qualify for protection.

Proposed trade mark for corporate legal advisors, sug-gesting their offices are somewhere on the Amsterdam canal Keizergracht. Rightly refused, we reckon.

An image mark for a café. You’re not allowed to register flags, so the tiny Swiss flag in the name was what got this one refused. We think that’s going a bit far though.

We feel this image mark for VVV Leeuwarden – a witty Frisian ‘take’ on the famous I LOVE mark - should have been accepted.

Never likely to have been accepted. The refusal of this word mark won’t have made this lawyer very happy.

Not distinctive Although the marks are obviously very simi-lar, the deciding factor is that Best Buy has very few distinctive elements. The word Best Buy is rather descriptive, and the yel-low label is also nothing out of the ordinary. Consequently, the brand’s level of pro-tection is very low – so low, in fact, that it’s not sufficient to stand in the way of the B!g Buy logo.

Competitors getting closeThe case once again demonstrates the dis-advantage of having an undistinctive trade mark, namely that your competitors can get very close to using what you’ve got.