On 6 February 2019, the District Court of Midden-Nederland (Utrecht) rendered a decision in preliminary relief proceedings regarding alleged trade mark infringement on the one hand and the alleged invalidity of the same trade mark on the other hand. In addition, the court was asked to render a decision regarding the use of a Benelux word mark (or a word element similar to a Benelux trade mark) as an element in a trade name.
The claimant in this case is Organisatie Landelijke Opleiding Tot Uitbeelding van Slachtoffers (translation: Organisation for National Training of Simulate Victims) (hereinafter referred to as: Lotus). The claimant (an association since 1975) aims to develop and to maintain knowledge and skills in relation to first aid, mainly by training programmes for certified simulated victims (these certified simulated victims play the role of victim during training programs concerning first aid, so that the participants can practice their skills).
Lotus is also the owner of the above Benelux trade mark registrations.
Lotus has license agreements with third parties to enable and to regulate the use of the word mark LOTUS by these parties.
Since 1 July 2016, Lotus had such a licence agreement with Improvement Training en Adviesbureau (hereinafter referred to as: ITA) (defendant No. 1). For the period of three years, the parties agreed that ITA and its partners (defendant Nos. 2 and 3) had the exclusive license to use LOTUS within the scope of the agreement.
In violation of the license agreement, the defendants started to use the sign LOTS and filed a trade mark application for this sign with the Benelux Office for Intellectual Property (hereinafter: BOIP) in the beginning of 2018. After receiving cease and desist letters of Lotus, ITA started using the signs TraumaLOTUS and trauma Opgeleide LOTUS. After receiving new cease and desist letters, ITA started using the sign Simulant Militaire en Civiele Traumatologie. Meanwhile, ITA withdrew the trade mark application for LOTS, but did not sign a declaration to refrain from using the above mentioned signs.
Defendant No. 4, LOTUSKRING ABCD (hereinafter referred as: Lotuskring) also specialises in the training and education of simulated victims. Lotuskring used the sign TraumaLOTUS to distinguish its services. After receiving a cease and desist letter, Lotuskring started using the sign trauma Opgeleide LOTUS.
In summary, Lotus claimed an injunction in the preliminary relief proceedings to prevent any trade mark and trade name infringements or any other wrongful acts in relation to the use of the sign LOTUS. During the case, ITA claimed that the trade mark LOTUS should be declared invalid pursuant to Article 2.28 BCIP, because of the meaning of the word LOTUS, which it claimed is an abbreviation used since the sixties to distinguish the simulated victim training. Therefore, it claimed that amongst medical professionals LOTUS has become customary in that field.
The judge held that the claim for invalidity would not be granted. Firstly, the word LOTUS does not refer to any characteristics of the services and, if LOTUS would be recognized as an abbreviation, the letters do not refer to the related services as well. Moreover, the defendants failed to demonstrate sufficiently that LOTUS was already a common name in relation to class 41 when the trade mark application was filed in 2014.
Trade mark infringement
Concerning the use of the signs LOTS, TraumaLOTUS and Trauma opgeleide LOTUS the preliminary relief judge held that this is trade mark infringement.
The sign LOTS is visually and aurally similar to the trade mark LOTUS. The only difference between the signs is the fourth letter U of the trade mark, which is absent in the signs. The signs TraumaLOTUS and Trauma opgeleide LOTUS were found to be similar to a high extent taking into account that the most distinctive and dominant element of the signs is identical to the trade mark LOTUS. Furthermore, the trade mark has a high distinctive character because it is well known amongst the relevant public.
In addition, the signs are being used in relation to training programs to become a simulated victim. These services are at least similar to the services for which the trade mark Lotus is registered.
Taking the above mentioned into account, the judge found that there is a likelihood of confusion between the mark and the signs and therefore there is trade mark infringement.
Because of the above mentioned arguments concerning the trade mark infringement, the judge held that the use of LOTUS as a trade name is a matter of trade mark infringement and therefore it is not necessary to assess article 5 of the Dutch Trade Names Act.