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Pronail, big fish in a small pond

Pronail, big fish in a small pond

Under the name PRONAILS, for many years, Amazing Brands has sold artificial nails and related products. In 2012 trademark protection is sought in the Benelux, however, the trademark is refused by the authorities. The trademark is descriptive according to them. NAILS is evidently a generic English term and PRO is an abbreviation of professional. The trademark is therefore descriptive for nail products provided by professionals. The trademark has, however, been accepted by the French and European trademark authorities. This does not influence the decision making policy in the Benelux, however.

In a final attempt Amazing Brands claims that the trademark has acquired distinctiveness. This argument is however also disregarded. The use has been too short and was mostly centered in Flanders. The trademark authorities claim that one can only acquire distinctiveness if this is done in all of the Benelux.
The high court of Brussels, agrees with Amazing Brands in the end. The company produces more than one hundred pieces of evidence to support acquired distinctiveness, going back more than ten years ago.
Clearly in the small niche market of gel- and artificial nails Amazing Brands is a well-known company. For acquired distinctiveness it is not necessary that the perception of a trademark is equally distributed throughout the Benelux territory. Sufficient is that with the use of the trademark a significant part of its target audience is reached. The Benelux authorities therefore had to register the trademark after all.

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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?
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