Action against trademark infringement in the Netherlands? Assess your chances of success in a lawsuit!
Recently, a trademark owner in the Netherlands stood up against an (alleged) trademark infringement. The Dutch corporate law lawyer Martijn Kesler explains the test that the court used for this purpose.
Has an infringement been tolerated silently? If so, protection will be reduced
An entrepreneurs’ trademarks are important and their maintenance is essential (if not vital). The Dutch court expects a proactive attitude in the event of a trademark infringement. Has an entrepreneur turned a blind eye on an infringement in the Netherlands? If so, the protection will be reduced.
Claimant’s trademark registered in the Benelux
The claimant in this case runs a trading company specialising in foods, including rice, which he purchases from countries such as Afghanistan, Pakistan, and Iran. These foods are then sold to (local) shops and general stores. It is also important to note that the claimant is the holder of the Benelux registered trademark “SITA.”
Application for Benelux word mark registration filed by defendant
In 2016, the defendant started importing rice which he sold in the Netherlands under the name SINA. The rice was sold mainly to Dutch private individuals and Dutch restaurants specialising in Iranian and Afghan cuisine, and some Dutch shops. As regards the name SINA, the defendant had applied for a Benelux word mark registration.
Claim: Trademark infringement prohibition and advance payment of damages
Although SINA stopped using the trademark SINA following the claimant’s summons and withdrew its application for registration of the “SINA” word mark, proceedings were still instituted against SINA. In these proceedings, the claimant (i) was seeking a trademark infringement prohibition and (ii) advance payment of damages or surrender of profits.
The Dutch court’s test for the likelihood of confusion
When such a case is brought to court in the Netherlands – usually to the Court of The Hague – the court will examine whether there is a likelihood of confusion on the part of the average and relevant public. This will take into account, among other things, the specific goods concerned and whether the relevant public could think that the goods or services in question originate from the same undertaking or economically-linked undertakings. In this context, all circumstances that may be relevant and are raised during the proceedings, the degree of similarity, and the distinctive character of the trademark will be taken into account.
Trademarks evoke specific associations: conceptual difference between word marks
After weighing the above aspects, the court concluded that there was insufficient similarity and, therefore, no likelihood of confusion. The court arrived at this opinion because of the difference in the trademarks. Although the type of public was similar, it appeared that SINA was a well-known scholar/philosopher in Islamic circles and SITA a girl’s name. Because of this, the Dutch court ruled that SINA evokes specific associations and, therefore, that there is a conceptual difference between the word marks SITA and SINA. This difference does not outweigh the (slightly) similar names, where only one letter is different.
(Potential) trademark infringement in the Netherlands? IP Lawyer!
As mentioned above, it is important to take proactive action against possible trademark infringements in the Netherlands. However, the disadvantage of (too) proactively opposing possible infringements is that in IP cases, under Section 1019h of the Dutch Code of Civil Procedure, all legal costs of the other party must be reimbursed. Under Section 1019h of the Code of Civil Procedure, the costs to be reimbursed may be very high. This means that it is essential to estimate the chances of litigation as accurately as possible in advance.