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