Trademark no more: I want to get rid of my car

Dealerdirect Global operates a website <ikwilvanmijnautoaf.nl>, which would translate into Iwanttogetridofmycar.com. A competitor also uses this Dutch phrase meaning 'I want to get rid of my car' on its website. The parties agree that the sign I WANT TO GET RID OF MY CAR has no distinctive character for trading in used automobiles. Plaintiff states, however, that through its intensive use in advertising I WANT TO GET RID OF MY CAR has become a trademark, in other words: it has acquired distinctiveness.

 

Abcor represents the defendant in the procedure that follows at the Benelux trademarks authorities. A market research report is submitted revealing that consumers perceive the phrase "I want to get rid of my car" as a descriptive message, not a brand. With that in mind, a procedure requesting revocation of the trademark is filed at the Benelux office and this is granted.

Dealerdirect appeals against this decision at the Benelux Court of Justice. Can the Office revoke a trademark previously accepted based on acquired distinctiveness? The Court rules it can! In these proceedings, new evidence has been submitted by both parties with regards to the acquired distinctiveness. Court (in line with Office) rules that on the basis of this evidence acquired distinctiveness can no longer be supported. This is partly due to the poorly conducted market research on the part of claimant. The revocation is upheld in Court. (Source image: Abcor)

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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?