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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MENTOS has been selling chewing gum under the name MENTOS PURE FRESH for several years. In order to protect her rights MENTOS has registered the following trademarks: the logo MENTOS PURE FRESH, the logo MENTOS PURE FRESH 3 and a figurative depiction of the word PURE. Defendant sells chewing gum under the trademark DENTYNE PURE and has registered its logo as a trademark. Infringement or not?
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