The degree of protection of your trademark depends on the distinctiveness of the trademark. It is also important to act proactively against possible infringements of your trademark. If you fail to do so, your trademark will slowly but surely lose its protection. Both aspects were addressed in a recent ruling by the Court of Central Netherlands. Thomas van Vugt, our intellectual property right lawyer, discusses the case.
Cash software, the holder of the trademark www.cash.nl, demanded that Reeleezee cease the use of the trademark www.cashr.nl. Although at first glance this case may appear a mere formality, the court in preliminary relief proceedings dismissed the claim. The trademark has to be distinctive. A company can apply for a trademark right for a ‘mark’ to obtain protection. It is important that this ‘mark’ distinguishes the company. The mark is often a logo or a word, but it can also have a specific form. The degree in which the ‘mark’ is distinctive is only of interest in determining the scope of the protection, not for the registration of the trademark.
In this case, Cash Software demanded that Reeleezee immediately ceases the use of the trademark cashr.nl. Cash Software stated that the word ‘cash’, also used in www.cash.nl, confuses the public. Visually, www.cash.nl and www.cashr.nl are very similar. However, in its defence Reeleezee states that, according to Reeleezee, the trademark is too descriptive and that the services of the two companies are different. Reeleezee offers an online cash register system that functions with the application of an app, whereas Cash Software develops software for the administrative area.
According to the court in preliminary relief proceedings, the word ‘cash’ is non-descriptive for these companies. After all, ‘cash’ just means cash money. This does not apply here and this means that the word ‘cash’ has (some) distinctiveness and can therefore be registered as a trademark as such. Both word marks are similar to one another. The court in preliminary relief proceedings eventually tested both trademarks. Although aurally and visually both trademarks are very similar, the word ‘cash’ is conceptually different from the word ‘cashr’. The word ‘cash’ refers to cash money, whereas the general public with the English word cash register shall associate ‘cashr’, receptively with a cashier..
The court in preliminary relief proceedings also stated that the overall impression of the word mark ‘cash’ is not very distinctive. Cash Software failed to adequately substantiate the degree of distinctiveness. Also, Reeleezee has shown that the word ‘cash’ is often used for the same products or services offered by Cash Software. The court eventually ruled that, due to the conceptual difference, in combination with the low degree of distinctiveness, there is no infringement in this case.
A trademark can be registered even if there is a low degree of distinctiveness. However, the degree of distinctiveness of a trademark is directly related to the degree of protection. If the word mark occurs often, the protection is limited. However, you always have to act proactively against possible infringements. If you fail to do so, and if the other party can show that several companies are using your trademark, the trademark looses a degree of protection. Therefore, if you are faced with a possible infringement of a trademark right, please contact one of our lawyers specializing in intellectual property law for an advice, free of obligation.