Limited protection of a company name

Many companies seem to think that listing the company’s name in the commercial register at the Chamber of Commerce or having the internet domain provides sufficient protection against third parties from acting under a similar name. Unfortunately quite often that is not the case. A trademark registration on the other hand gives a better chance of claiming the company’s name exclusively.


Since 2015, home care organization “de Zonnestraal” has been providing home care services in the city of Tilburg. The corresponding domain name “homecare-dezonnestraal.nl” is used by them since 2016. In 2017, another provider called “De Zonnestraal” starts its operations in Hoofddorp, at the other side of The Netherlands, using the domain name “homecaredezonnestraal.com”.

The Tilburg company summons the new company to change its name because they are too much alike. The court decides that if a company operates only regionally, its registered trade name is only protected locally, not nationally, regardless of a national top level domain being used. Home care is a regional activity by definition. The cities Hoofddorp and Tilburg are 130 km apart, so chances of customers changing over are unrealistic.

The claim is rejected and the Tilburg company is ordered to pay the legal expenses also for the other party (€ 9,000). Lesson learnt: If you want nationwide exclusiveness, in order to expand to other regions, register a trademark for the company name.

 

tradenames



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?