Also read: Measuring knowing: how to make your brand top of mind
Posted: Tue Dec 17, 2024 5:01 am
2018: trademark 'I want to get rid of my car' valid, competitor must stop with that text
In 2018, Dealerdirect started summary proceedings due to trademark infringement. Wijkopenauto's had as a defense that the trademark is completely descriptive and therefore void. In this way, a butcher cannot monopolize 'butcher' by registering it as a trademark.
That is why Wijkopenauto's had already started a procedure at the Benelux Trademarks Office to have the brand nullified. The interim relief judge did not want to hear anything about nullity. He may only assume nullity if it is fairly certain that the Benelux Office will nullify the brand. That was not so certain, according to the judge. After all, an assessment is already made by the Benelux Office upon registration.
In addition, the descriptive wording had been used so often since the beginning of use in 2006 that, according to the judge, the public did see it as a trademark. And then words that normally cannot be a trademark can still be registered as a trademark. Lawyers call that phenomenon 'naturalization'.
There was no time to assess all kinds of market research on whether or not there was naturalisation in summary proceedings. So the judge assumed a valid trademark. And there was also lebanon telegram data infringement of that trademark: there was a risk of confusion. The average internet user would surely think that one had something to do with the other. So Wijkopenauto's had to stop using the text 'I want to get rid of my car'.
2019: 'I want to get rid of my car' trademark not valid, competitor allowed to continue?
In the meantime, the procedure at the Benelux office continued as usual. In 2019, a ruling was made. The two competitors did agree that 'I want to get rid of my car' is usually not suitable as a brand. So the only question left was: 'was this brand 'naturalized' when it was filed?'.
You can only demonstrate this with thorough market research. The researcher is not allowed to steer. Both parties had submitted market research:
Market research 1 ended up in the bin because it was only aimed at the Netherlands, while it concerns a Benelux brand and people in Flanders also speak Dutch.
Market research 2 and 3 – both from (slightly) after the filing date, and only among people with a driving licence – led to a maximum 'aided recognition' of 48%. That is simply not enough.
The trademark therefore had to be cancelled according to the Benelux Office.
In 2018, Dealerdirect started summary proceedings due to trademark infringement. Wijkopenauto's had as a defense that the trademark is completely descriptive and therefore void. In this way, a butcher cannot monopolize 'butcher' by registering it as a trademark.
That is why Wijkopenauto's had already started a procedure at the Benelux Trademarks Office to have the brand nullified. The interim relief judge did not want to hear anything about nullity. He may only assume nullity if it is fairly certain that the Benelux Office will nullify the brand. That was not so certain, according to the judge. After all, an assessment is already made by the Benelux Office upon registration.
In addition, the descriptive wording had been used so often since the beginning of use in 2006 that, according to the judge, the public did see it as a trademark. And then words that normally cannot be a trademark can still be registered as a trademark. Lawyers call that phenomenon 'naturalization'.
There was no time to assess all kinds of market research on whether or not there was naturalisation in summary proceedings. So the judge assumed a valid trademark. And there was also lebanon telegram data infringement of that trademark: there was a risk of confusion. The average internet user would surely think that one had something to do with the other. So Wijkopenauto's had to stop using the text 'I want to get rid of my car'.
2019: 'I want to get rid of my car' trademark not valid, competitor allowed to continue?
In the meantime, the procedure at the Benelux office continued as usual. In 2019, a ruling was made. The two competitors did agree that 'I want to get rid of my car' is usually not suitable as a brand. So the only question left was: 'was this brand 'naturalized' when it was filed?'.
You can only demonstrate this with thorough market research. The researcher is not allowed to steer. Both parties had submitted market research:
Market research 1 ended up in the bin because it was only aimed at the Netherlands, while it concerns a Benelux brand and people in Flanders also speak Dutch.
Market research 2 and 3 – both from (slightly) after the filing date, and only among people with a driving licence – led to a maximum 'aided recognition' of 48%. That is simply not enough.
The trademark therefore had to be cancelled according to the Benelux Office.