Amsterdam University, descriptive mark?

The Benelux trade mark office can refuse a trademark if it feels that this is descriptive. This decision can be appealed at the Benelux Court of Appeal. In the past ten years the Court of Appeal in The Hague has almost always followed the line of the BOIP, but at its latest decision from December 2018, the BOIP is suddenly overuled. A sign of hope for the future?

The UvA (University of Amsterdam) applies for protection in 2016 for the word mark AMSTERDAM UNIVERSITY. The trademark is not only refused by the Benelux authorities for educational services, but also for all kinds of merchandise items (such as coffee mugs, sweaters, etc.). These articles are in fact available at the UvA. The UvA offers these articles for sale in a souvenir shop or as giving them away at times. The Court partly disagrees with this refusal. In an earlier judgment on Neuschwanstein Castle, the European Court of Appeal had to rule about trademark use for souvenirs. By trademarking souvenirs, the product doesn’t suddenly become descriptive. Consequence: the trademark is not valid for educational services, but for merchandise items it is. For organizations active in merchandising (such as city marketing organizations) this ruling is a gift from heaven. (source image: Moon)

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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?