TOP 40 for Dutch Expats

Trademark rights are territorial. If another party uses a similar sign in another territory, is it possible to take action against it?

 

The Dutch Top 40 Foundation has registered its trademarks ALARMSCHIJF, TIPPARADE and the TOP 40 logos in the Benelux. An online radio station located in Spain and in the USA, aimed at Dutch expats, uses these marks on social media and on its online channel. Infringement, the foundation argues.

The defendant disputes this. The online channel does not use the marks in the Benelux. The channel only targets expats abroad. This is evident, among other things, from the advertisements. The court follows this reasoning.


To establish infringement, it is important which country the station targets. The fact that a station is available to listen to in a country is insufficient for this. Among other things, the defendant has an American phone number, a logo with USA in it, the broadcast times are in American times and their Facebook page states that the channel targets expats in the region. Therefore the channel targets Dutch and Belgians abroad, which does not fall under the scope of the Benelux trademarks. Those rights stop at the border. The ban is rejected.

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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?