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.

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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?