Wendy’s Local David versus Global Goliath

A feud dating back to 1997 has been ongoing between the American fast food chain Wendy's and a local diner in the Netherlands. The local diner trademarked their company name in 1995 for the Benelux. The American chain did previously have a trademark in the Benelux, but that had expired as a result of non-use. When the American chain files for trademark protection in 2015, the Dutch trademark holder successfully objects. For many this sounds almost incomprehensible. How can a local diner stop a multinational chain like Wendy's by simply invoking a Benelux trademark?

 

In response, the international fast-food franchiser launches a cancellation action against the Benelux trademark for lack of genuine use in commerce. Their stance: trademark rights can only be maintained if there is more than one outlet, one local diner is not enough.


Court disagrees. Many neighborhood diners exist in the Netherlands. This local diner has an acceptable turnover, its name and logo are featured on the store front, packaging, take-away bags, cash register receipts and for sponsoring and advertising. The use of the trademark is therefore not symbolic and will retain its protection. The foreign fast-food chain is banned from using their brand name in the Benelux.

A logical outcome in itself but it remains surprising that the American Wendy’s chose this approach. If they had sought an amicable approach, it would have probably been settled immediately. The American company may continue to use its name for the corporate holding in Amsterdam. Corporate holding services are not similar to the services of a diner. There's no infringement.

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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?