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Reapplication of a Benelux trademark not in bad faith

Reapplication of a Benelux trademark not in bad faith

A brand should be used within five years after registration, otherwise it becomes subject to cancellation by third parties. The idea behind this is to enable third parties to use a certain name if no one else is using anymore.   

Sometimes, however, it takes longer to get a product on the market (e.g. drugs). Or a manufacturer may not want a competitor to start using the brand while the product are being phased out. For this reason, companies often re-register a brand after five years, in order to re-claim those rights. The question remains whether this is allowed (especially since there are different views on this in Europe). This matter came up in a procedure concerning WE, a company that re-registers the mark ME every five years. The mark had actually not been used for nearly twenty years. WE, however, did not want any third party to use her old trademarks ME, SHE or HE. When MEXX launched its campaign ME+XX, the problems started. The Court found that defensive registration of trademarks are in fact permissible. But that was not the end of this case. The court held that ME+XX was sufficiently different from ME, so that no confusion is to be expected. WE ended up with empty hands, despite having a valid and legitimate trademark. To add insult to injury, WE was ordered to pay the costs (estimated at € 35,000, -)
 

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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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