Infringement of the Dealerdirect trade mark ‘IK WIL VAN MIJN AUTO AF’
On 9 August 2018, the (Dutch) Overijssel District Court issued an interesting judgment on the urgent interest requirement in Dutch short summary proceedings between Dealerdirect Global B.V. and Dealerdirect B.V. ("Dealerdirect") and Wijkopenautos B.V. ("Wijkopenautos").
Dealerdirect offers an online platform on which consumers can offer their car to car dealers as potential buyers. Dealerdirect only offers this platform as an intermediary service and does not buy cars itself. Wijkopenautos also offers an online platform where car owners can offer their car but the fundamental difference with Dealerdirect is that Wijkopenautos buys the cars from the sellers itself.
Dealerdirect is the owner of the Benelux trade mark registration for the combined word and logo mark 'IKWILVANMIJNAUTOAF.NL' in classes 12 and 35, including advertising and mediation with regard to establishing contacts between customers and vehicle vendors. Dealerdirect is also the owner of the EU trade mark registration for the word mark 'IKWILVANMIJNAUTOAF' for class 12. Freely translated into English this mark means “I want to get rid of my car”.
Wijkopenautos used the sign ‘ik wil van mijn auto af’ on its website from 13 October 2014. Dealerdirect objected to this in 2018 in short summary proceedings. Dealerdirect requested Wijkopenautos to cease the infringement of its Benelux trade marks and requested a preliminary injunction that Wijkopenautos cease using the sign ‘ik wil van mijn auto af’. As additional claims, a request was made for the number of visitors to www.wijkopenautos.nl, the Google AdWords search volume, the organic traffic on this website under the search terms 'Ik wil van mijn auto af' and a statement of the gross and net profit with the operation of Wijkopenautos.nl all under pain of a judicial penalty.
The court in preliminary injunction proceedings first has to assess whether or not the claimant has an urgent interest in its claims. This has to be assessed for each claim (e.g. injunction, disclosure of information) individually. There is no strict deadline under Dutch law after which there is no longer an urgent interest in a preliminary injunction but according to settled case law in such matters, the claimant’s failure to act swiftly may lead to loss of the required urgent interest.
In this matter, the court was of the opinion that there is an urgent interest in this case with regard to the requested injunction despite the fact that Dealerdirect sent a warning letter to Wijkopenautos in 2016 and waited to send a second warning letter until May 2018. The main reason for the court to assume that Dealerdirect has an urgent interest is that the first warning letter in 2016 was based on a word-device mark only and that the second warning letter (2018) was also based on Dealerdirect’s word mark, which was only registered on 28 March 2018. Therefore, the court held that there is an urgent interest insofar as the claims were based on the word mark but that there was no longer an urgent interest for the claims based on the word-device mark.
However, Dealerdirect’s additional claims for information of the website visitor numbers and gross and net profits made by Wijkopenautos were denied by the court because of the lack of urgent interest. The court found that providing such a detailed report would be a very complex and far-reaching order for Wijkopenautos to comply with and that Wijkopenautos sufficiently argued that Dealerdirect had not suffered any damage. Therefore, such a claim should be dealt with in proceedings on the merits and not in short summary proceedings.
Trade mark Infringement
Regarding the question of trade mark infringement, the court held that the use of the signs ‘ik wil van mijn auto af’ could lead to a likelihood of confusion on the relevant part of the public, including because Wijkopenautos used the sign prominently directly under its own mark on the website as if it were a sub brand. Furthermore, the court took into account evidence that consumers were actually confused, which was shown by reviews on websites like Starred, Facebook, Trustpilot and Google.
Wijkopenautos’ defence that the word mark lacks any distinctiveness (‘I want to get rid of my car’ for intermediary services for selling a second hand car is arguable not a very distinctive mark) was rejected by the court even though Wijkopenautos has already filed a cancellation action at the Benelux Office for Intellectual Property. According to the court, the question whether or not the mark is sufficiently distinctive, is one that should be answered in proceedings on the merits, especially since Dealerdirect extensively argued that its mark had acquired distinctive character through use in the Benelux. This led to the result that Wijkopenautos – for now - is ordered to cease the use of the sign ‘ik wil van mijn auto af’ under pain of a penalty.