Ban on name change to TOM

A Dutch chain of petrol stations has been using a fictional character named “Tom de Ridder” in its radio commercials since 2009, in order to promote its payment card and parking services. In 2015, the company decides to change the name to TOM. To prevent problems, the company discusses the plans with TomTom (the well known car navigation brand).

The TOM logo is modified and a coexistence agreement signed. In this agreement it is stated that only the logo shall be used and not the word TOM. No provisions are made for the use of TOM as a trading name.

The company launches a radio campaign introducing the new trade name TOM. On social media, the slogan "TOM HELPS YOU DISCOVER NEW ROADS" is used. This use is in conflict with the agreement, so TomTom protests. Parties end up in court. By provisional ruling the use of the name is prohibited. In appeal the court comes to the same conclusion.

The agreement has been rightfully dissolved by TomTom. Since an agreement no longer exists, any use of the logo or word mark constitutes an infringement. TomTom is a well-known brand and TOM is similar. Navigation and (travel) information equipment are complementary or at least similar to mobility services and travel information. The public may assume that the companies are linked. The result: prohibition of the use of TOM as a brand and trade name.

trademarks



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