On 26 October 2016 the District Court in The Hague (the Netherlands) rendered a decision in a case brought by the German company Dr. Ing. H.C.F. Porsche Aktiengestellschaft (“Porsche”) against an unnamed natural person.
Porsche was established in 1931 and is famous for the production of luxury cars. It is the proprietor of amongst others an EU trade mark for the words PORSCHE DESIGN for goods and services in class 9, 12 and 28 and an word EU trade mark for goods and services in class 9, 12, 28 and 42 for the word:
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In a previous case between Porsche and the same Defendant in 2012, the District Court in The Hague decided that the Defendant had filed a trade mark application for the sign PORSCHE in bad faith. The Court ordered, in short, that the Defendant must cease and desist the filing of an Benelux or EU trade mark consisting of the word element “Porsche” under a penalty of €25.000 for each time that the Defendant acted in breach of this order. This decision was confirmed on 26 November 2013 by the Court of Appeal in The Hague.
On 17 March 2014, 11 April 2014 and 10 May 2014 the Defendant registered several trade marks with the Benelux Office for Intellectual Property (“BOIP”) for the sign [email protected] for goods and services in class 9, 12, 28 and 42. On 15 September 2015 and 14 October 2015 the Defendant also filed trade mark applications for EU trade marks, but these applications did not lead to registration since the fees were not paid.
Porsche requested the Court to annul the registration of the Benelux [email protected] trade marks, an injunction to prevent it filing or register the sign [email protected] or similar signs that are similar to the Porsche trade marks and an injunction preventing it from infringing the Porsche trade marks. Porsche also claimed payment of €75.000 as penalties and the full costs of the proceedings.
According to Porsche the [email protected] trade marks are similar to the Porsche trade marks and are registered for identical or similar goods, which could lead to confusion on the part of the public. In addition, it claimed the use of the sign [email protected] took unfair advantage or is detrimental to the distinctive character or the repute of the Porsche trade marks. Finally, Porsche stated the [email protected] trade marks should be declared invalid based on bad faith.
The Defendant denied that the [email protected] sign is similar to the Porsche trade marks, as (i) the Porsche trade mark is a figurative mark, (ii) the trade mark [email protected] has not yet been used and (iii) no oral, visual or conceptual similarity would exist between the marks. All three arguments were rejected by the Court. The Court granted Porsche’s request to annul the [email protected] trade marks. However, Porsche’s request for an injunction in relation to infringement was dismissed, as Porsche failed to demonstrate that there is a threat of infringement. The mere circumstance that Porsche cannot exclude the fact that the Defendant will use the [email protected] trade mark is insufficient for an injunction.
The Court also denied Porsche’s request for the payment of €75.000 as penalties. According to the Court the scope of the injunction is limited to acts that constitute infringements as ordered by the Court. In the previous case the filing of the word mark PORSCHE had been discussed and not any sign that is similar to it. The injunction mentioned explicitly “PORSCHE” and therefore it cannot be understood to include similar signs.