The same trade name does not constitute an infringement. How can that be?

10 Mar 2022

We are inclined to think that using the same trade name is not possible. Is organisation A using a trade name? Then organisation B cannot use exactly the same name. If organisation B does it, this will quickly result in an infringement of the trade name right.

But it doesn't always have to be that way. I will explain how that can be.

WOW

I will take the recent WOW judgment (in Dutch) as an example. The claimant in this case is Stichting WOW. Stichting WOW has registered a word and figurative mark with the Benelux Office for Intellectual Property (hereafter “BOIP”).


In this case, Stichting WOW is suing the defendant WOW Lijnbaan B.V.. WOW Lijnbaan uses its trade name in various ways. What is clear is that it always uses the word 'WOW':

The question is whether WOW Lijnbaan is thereby infringing on the trademark and trade name rights of Stichting WOW.

Since the defendant's name is (at least partly) the same as the plaintiff's, we are inclined to think that there is infringement. But the court does not think so. Why is that?

Trade name

The basic principle is that an organisation may not use a trade name that is already in use at that time. There are exceptions to this principle, but I will not go into them now.

The court finds in this case that there is no confusion for the relevant public. The parties both serve a different geographical area. Stichting WOW is located in Rotterdam. WOW Lijnbaan is located in Amsterdam. The fact that WOW Lijnbaan also has plans to open a branch in Rotterdam does not matter, according to the court.

Trademark infringement

So is there an infringement of the WOW trademark? No. The court ruled that the use of WOW has little distinctive character. It is not very creative. And so the scope of protection is small.

But that is not the only thing that is relevant in this case. The court also considered that the parties' use of the WOW signs was not identical. There are differences in their use. For example, because Lijnbaan WOW is almost always used in combination with the words "burgers & fries".

The court also finds it implausible that the public will think that the signs of WOW lijnbaan originate from Stichting WOW. So that parties in this case are mixed up. The court has ruled that the origin of the WOW signs cannot be mistaken. And so there is no trademark infringement.

Conclusion

The more original the trade name, the better. Creative trade names have a greater scope of protection. Non-creative names can also be protected. However, if a different geographical area and a different type of use of the name are involved, this protection can still be circumvented.

    Copyright on advertisement text
    Read more
    Hollanda’da şirket kurmak
    Read more
    What are the trademark registration requirements?
    Read more
    Marka tescil şartlar nelerdir?
    Read more
    Neden bir kelimeyi veya logoyu marka olarak tescil ettirmelisiniz?
    Read more
    Why should you register a word or logo as a trademark?
    Read more
    AI in Pharma
    Read more
    AI Act and Pharma / Health
    Read more
    Indemnification and IP infringement: a matter regarding shoes
    Read more
    What information needs to be included in a privacy policy?
    Read more
    Burden of proving genuine use
    Read more
    Data
    Read more
    There are already rules for AI applications
    Read more
    AI: Supervision and Toolbox
    Read more
    Infringement of descriptive trade name possible after all
    Read more
    Design right on furniture: infringement or not?
    Read more
    Distribution agreement
    Read more
    Licence agreement
    Read more
    Fashion & Design
    Read more
    Competitor's use of a brand in advertising
    Read more
    Advertising
    Read more
    Software
    Read more
    IT-right
    Read more
    Slavish imitation
    Read more
    Trade secrets
    Read more
    Trade names
    Read more
    Domain names
    Read more
    Copyright
    Read more
    Trademark and design
    Read more
    Consent under the GDPR: things to keep in mind
    Read more
    Intellectual property
    Read more
    When are you allowed to decompile software?
    Read more
    Choices when choosing cloud services
    Read more
    We already have rules for AI systems
    Read more
    Exploring the legal boundaries of Synthetic Data
    Read more
    Risk check for AI applications
    Read more
    Legal Department-as-a-service
    Read more
    New European rules for Artificial Intelligence
    Read more
    Nieuwsbrief BG Tech: de toekomstige uitdagingen in de IP & Technologie & gratis Webinar
    Read more
    Data breaches under the GDPR
    Read more
    European Perspectives on AI Medical Devices
    Read more
    BG.tech
    Read more
    Vacatures
    Read more