Bavaria is a large brewery in the Netherlands that produces a range of pale lagers under a variety of brand names, including Bavaria. For its Bavaria brand, the brewery has used the slogan "Zo. Nu eerst een Bavaria" ("And now. Let's first have a Bavaria") in its advertisements since 1985. The slogan is well known in the Netherlands and its consistent use has increased its distinctive character.
Bavaria is the owner of two registered trademarks in Benelux: ZO. NU EERST EEN BAVARIA since 2007 and ZO, NU EERST 'N BAVARIA since 1998. Both marks are registered for goods and services in Classes 32 and 35, which cover, among other things, beer.
Your Hosting provides internet services – including cloud services. In Autumn 2015 Your Hosting started using the slogan "Zo. Nu eerst naar de cloud" ("And now. Let's first go to the cloud") in a commercial broadcast on prominent radio stations. Bavaria claimed that this use of the slogan constituted an infringement of its copyright and trademark rights. Bavaria subsequently initiated summary proceedings.
District Court of The Hague decision
On March 16 2016 the District Court of The Hague ruled that the use of the slogan "Zo. Nu eerst naar de cloud" constituted an infringement of Bavaria's copyrights.(1) According to the judgment, the slogan "Zo. Nu eerst een Bavaria" was a work protected by copyright. In particular, the district court held that the element 'Zo. Nu eerst', with its clear aural pause after the term 'Zo' ('And now'), was characteristic of the slogan and met the threshold for copyright protection. Since Your Hosting had reproduced this characteristic element in its own slogan, the use of the slogan "Zo. Nu eerst naar de cloud" constituted an infringement of Bavaria's copyrights. The trademark aspects of the matter were not dealt with at first instance, as Bavaria had no separate interest in the trademark claim given the favourable copyright judgment.
The judgment caused quite a stir in the Dutch IP community – many believed that the threshold for copyright protection had become lower than ever.
Your Hosting appealed against the district court's judgment. The Court of Appeal of The Hague rendered a judgment on July 19 2016 which reversed the judgment of the district court.
Court of Appeal of The Hague decision
Contrary to the ruling of the district court, the appeal court held that the slogan "Zo. Nu eerst een Bavaria" was not protected by copyright law. The appeal court first established the framework for copyright protection and referred to the judgment of the European Court of Justice (ECJ) in Infopaq International v Danske Dagblades Forening.(2) The appeal court stated that the criteria for copyright protection established by the ECJ are the same as those applied in the Netherlands.
Infopaq established that words as such do not constitute elements covered by protection, and that "it is only through the choice, sequence and combination of those words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation".(3) According to the appeal court, Bavaria's slogan did not meet the requirement of originality as stipulated in Infopaq.
The appeal court held that when the slogan was created, the combination of words 'Zo. Nu eerst' was not a choice, sequence or combination of words that expressed the author's creativity. Instead, the combination of words resulted in an ordinary and widely-used syntax; the aural pause after 'Zo' did not alter this finding.
As a result of its copyright claim being denied on appeal, Bavaria had an interest in having its trademark claim assessed by the appeal court. Unfortunately for Bavaria, this claim was also denied.
Bavaria based its trademark claim on Articles 2.20(1)(c) and 2.20(1)(d) of the Benelux Convention on Intellectual Property, which grant the trademark owner the right to oppose the use of a sign where its use without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the trademark.
Bavaria held that Your Hosting sought to capitalise on the reputation of Bavaria's trademarks and benefit from the power of attraction, reputation and prestige of its mark in order to:
- generate an unfair advantage for Your Hosting;
- be detrimental to the distinctive character of the mark; and
- undermine the reputation of Bavaria's trademarks.
Bavaria argued that as a result of the use of the slogan by Your Hosting and the similarity between its own registered mark and the slogan, the public could make a connection between Your Hosting's slogan and Bavaria's registered trademark or could establish a link between them, resulting from the similarity between the mark and the slogan and the reputation of the earlier mark. The appeal court decision does not show that the parties were divided about the fact that Bavaria's trademark was a mark with a reputation. The appeal court further did not deny that the public would establish a link between Bavaria's trademark and Your Hosting's slogan. However, the appeal court held that the existence of a link is not decisive and Bavaria needed to demonstrate that the slogan's use resulted in one of the three situations listed above. According to the appeal court, Bavaria failed to prove that any of these situations had occurred.
Regarding the claim that the distinctive character of Bavaria's trademarks was diluted as a result of the use of Your Hosting's slogan, the appeal court referred explicitly to the ECJ ruling in Environmental Manufacturing v OHIM.(4) In this ruling the ECJ established that the economic behaviour of the average consumer can change as a result of the use of similar marks, and that the burden of proof substantiating these changes lies with the owner of the earlier mark. The required prima facie evidence must portend a future risk of detriment (ie, risk which is not hypothetical), which may be established on the basis of logical deductions made from an analysis of probabilities; risk calculations must also take into account commercial sector practices and all other circumstances of the case.
The appeal court ruled that such prima facie evidence was not delivered by Bavaria in these summary proceedings and therefore the trademark claims were subsequently denied on appeal.
Given the disbelief expressed in the Dutch IP community after the district court's judgment in Bavaria, it comes as no surprise that the appeal court overturned the district court's decision with regard to the copyright claim. While many consider the existing threshold for copyright protection to be low, it should be welcomed that the combination of five common words with a common syntax was not awarded copyright protection.
With regard to the trademark claim, the judgment could have gone either way. The appeal court seemed to accept that Bavaria's slogan qualified as a reputed mark, yet it did not follow from the judgment that this was being debated. Bavaria's unsuccessful claims appeared to have been merely the result of the company's failure to substantiate both the negative effects on its mark's distinctive character and reputation from the use of a similar slogan by Your Hosting, or the unfair advantage of Your Hosting. Bavaria's chances are likely to be far greater in main proceedings where there is more room for the provision of evidence.