The importance of protecting a logo, WELSON vs WELLUX

The main rule is that a word-mark is optimally protected when registered in all-caps. In whichever way the word is used, the use then falls under the requested protection. However, with short wordmarks, small differences are often enough to distance oneself. In such cases filing a logo can provide extra protection.

 

Bodyfit Wellness sells and installs swimming pools. The company decides to change its name to WELSON in 2020. In order to protect the rights, not only the word mark, but also the new logo is registered as a trademark.

Shortly after the national campaign has started, a competitor decides to change its name to WELLUX. Court rules that WELLUX does not infringe on WELSON. The first half is identical, but refers to wellness. The last parts, SON and LUX, are therefore the more distinctive parts and differ sufficiently.

However, the logo does form an infringement. Both logos are visually very similar. They consist of six letters with a wave motion above it, a peak in the middle and the similar formatting. The logo may no longer be used.

trademark-registration



Latest news
NFT: trademark registrations in the metaverse
Volkswagen trumps cult camper
Adidas: bare breasts and sports bras
Yoko Ono and John Lemon gin
Barbie tackles copycat
Our Clients
Follow Abcor
claimant
defendant
claimant
defendant

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?