DOC/Dairy Partners - purely descriptive trade names

For some years now (following recent case law of the Dutch Supreme Court) there has been discussion about the extent of the protection of purely descriptive trade names. Can a company with a descriptive trade name claim exclusivity to this name and subsequently prohibit other companies from using a similar word in their trade name?

 

DAIRY Partners and DOC DAIRY Partners are both dairy companies and active internationally. DAIRY Partners argues that the two company names are too similar, causing a risk of confusion and demands a ban. DOC states that the word dairy is purely descriptive of a dairy company. In that case, the likelihood of confusion is not sufficient to prohibit the sign in a company name, unless additional circumstances exist.

The Dutch Supreme Court shed light on this issue last spring, stating that additional circumstances are unnecessary, only considering the risk of confusion. All other circumstances of the case (including use) should then be taken into account. The public knows that companies often use descriptive names and are therefore less likely to confuse them with each other, so small differences are enough. The public will associate a descriptive trade name with a company only if that name has become well known due to extensive use.

The scope of protection is therefore very limited for a descriptive trade name, while the scope of protection of a distinctive company name naturally is significantly larger.

tradenames



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PURE - MENTOS

MENTOS has been selling chewing gum under the name MENTOS PURE FRESH for several years. In order to protect her rights MENTOS has registered the following trademarks: the logo MENTOS PURE FRESH, the logo MENTOS PURE FRESH 3 and a figurative depiction of the word PURE. Defendant sells chewing gum under the trademark DENTYNE PURE and has registered its logo as a trademark. Infringement or not?