On 29 May 2018, the Court of Appeal of The Hague rendered a judgement on appeal regarding opposition proceedings brought in first instance at the Benelux Office for Intellectual Property ("BOIP").
Briefly summarised, the parties in this case were KPN and KPP Design Ltd. KPN is a Dutch landline and mobile telecommunications company, widely known in the Netherlands and the rest of the Benelux. KPP Design Ltd. is a company under English law owned by Mr. Michael Gleissner.
KPN is the proprietor of several trade mark registrations, amongst which Benelux word mark No. 0529431, Benelux device mark No. 0798741 and Benelux device mark No. 0983850 (above right).
On 18 November 2015 KPP filed a Benelux trade mark for PN for goods and services in class 9, 25 and 38, against which KPN started an opposition procedure, relying on article 2.3 of the Benelux Convention on Intellectual Property more specifically section b, likelihood of confusion.
At first instance (August 2017), the BOIP rejected this opposition because of lack of similarities between the signs. The BOIP argued that the trade marks did not have any visual or aural similarities. Furthermore, because of this lack of similarities, the BOIP did not gave an opinion on the similarities of the goods and services involved.
Likelihood of confusion
In contrast to the approach of the BOIP, the Court of Appeal of The Hague has explained that, for section b of the above mentioned article about the likelihood of confusion, it is necessary to take into account what kind of impression the average consumer would have regarding the trade mark and the sign, taking into account, the relevant circumstances of the particular case, mainly the relationship between the trade mark and the sign and the similarity of the goods and services involved.
Globally, the visual, aural and conceptual similarities should be considered, next to the total impression of the mark and sign. Furthermore it is necessary to consider distinctive and dominant elements of the mark and sign and likelihood of confusion should be assumed if the goods and/or services bear a strong similarity.
KPN vs. PN
In the present case, the earlier (word) mark KPN should be compared to the sign PN. The earlier mark contains 3 letters, and the last letters, PN coincide with the new sign which contains only those two letters. The first letters are different.
The Court of Appeal stated that, because of the above mentioned similarities, it is not possible to conclude that the mark and sign do not have any visual or aural similarity. However, the mark and sign are only similar to a lesser degree.
As a result of the above mentioned similarity, the Court of Appeal also needed to give an opinion on if it is likely that the public would be confused or if the public would assume that the mark and sign are associated because of other relevant factors such as the reputation of a trade mark or because the earlier mark is a well-known trade mark. In the present case, the trade mark KPN is intensively used, from which it has a strong distinctive character and a well-known status.
The goods and services for which the trade marks are registered (including class 9, 38 and 42) are identical or at least highly similar to the goods and services for which the new sign is filed (class 9 and 38). It is not relevant that the marks of KPN are registered for goods and services relating to telecommunications.
Taking everything into consideration, the Court of Appeal concluded because there is some degree of visual and aural similarity, because of the similarity between the goods and services and because of the distinctive character of the earlier marks, a certain degree of likelihood of confusion pursuant to article 2.3 section b of the BCIP exists. Therefore, the earlier decision was set aside. The application for PN was rejected for the goods and services in classes 9 and 38.
From 1 June 2018 appeals such as the above mentioned, will be handled by the Benelux Court of Justice. The Convention now stipulates that the Second Chamber of the Benelux Court of Justice is exclusively competent to handle all appeals against decisions of the BOIP in opposition proceedings and in cases regarding the refusal of a Benelux trade mark.
Such appeals are currently handled by three different courts in the three Benelux countries. The centralization of appeals aims to uniform case law, save time and limit procedural costs.
The Second Chamber of the Benelux Court of Justice will comprise of judges from all three Benelux countries. For the Netherlands, it concerns two judges of the Court of Appeal in The Hague.
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