District Court of The Hague, Decision of 17 November 2010, No. 371238, KG ZA 10-891

The District Court of The Hague rendered a decision in the summary proceeding DigiD v. Digi-D. In particular, it gave guidance on the use of a sign in the course of trade.

The company Digi-D, founded in 2003, offers commercial services with regard to the design and visualization of logos, labeling prints and the styling of collections, fabric patterns for furniture, curtains and textiles, the development of means of communication as well as printed matter support and website construction and internet services.

In 2004, Digi-D was confronted with the use of the sign "DigiD" (as an abbreviation for "Digital Identity") by the foundation ICTU, founded by the Ministry of the Interior and Kingdom Relations and the VNG (Association of the Netherlands Municipalities) for the development of the "electronic government." The electronic government aims to improve the work processes of the authorities, the service provided to society and interaction with citizens. By using a "DigiD", users can access a large number of online services by the Dutch government agencies. The Dutch government has registered the logo "DigiD" at the Benelux Office for Intellectual Property as a figurative trademark.

Click here to view Dutch government's "DigiD" trademark

Digi-D claimed that the use of the sign "DigiD" by the Dutch government infringed the rights in its trade name as it was detrimental to its trade name reputation. It also claimed unfair competition practice alleging it suffered damage from receiving and answering emails addressed wrongly.

The District Court of The Hague rejected the claims. It stated that the use of the sign "DigiD" for the Dutch government's digital authentication service was a non-profit activity which could not be qualified as an infringement of an undertaking on a trade name. The registration of the sign as a trademark did not constitute use of Digi-D's trade name as the logo and the word "DigiD" were not used in the market for the goods or services protected by the trade name.

The court said that according to the decisions of the Court of Justice of the European Union Arsenal Reed[1] and Opel v. Autec[2] a sign was used in the course of trade if it was used in the scope of a commercial activity in order to gain an economic advantage. This was not the case if the sign was only used with regard to governmental tasks.

With regard to Digi-D's claim that the use of the very similar mark constituted an unfair competition practice, the court held that this was only the case if there was an actual and evident likelihood of confusion and additional circumstances showing the wrongful act.

The court noted that this view was not contradicted by the measures taken by the Dutch government after consultation with Digi-D in order to counter the confusion with the public, in particular, by offering 100,000 EUR as a compensation for the measures taken by Digi-D to end the confusion, such as a change of name. Digi-D claimed that this amount was not sufficient; however it was not able to prove this claim.

As a result, the District Court of The Hague rejected all of Digi-D's claims and ordered Digi-D to pay the costs of the proceedings.

The decision was appealed by Digi-D.