The Dutch company “Levola” is known for its cream cheese sold as “Heksenkaas” (“Witches’ Cheese”). Heksenkaas is a spreadable dip made of cream cheese, fresh herbs and a “a tiny bit of magic”. Levola is the proprietor of the word mark “Heksenkaas” for goods and services in class 29 and 30 and sells Heksenkaas in the following buckets:
Levola won different opposition proceedings against the company “Fanofinefood” who filed the word mark “Witte Wievenkaas” and the two figurative trade marks below in class 29 and 30:
Recently the Court of Appeal of The Hague has overturned three decisions of the Benelux Bureau of Intellectual Property (BBIP). Articles 2.3 and 2.14 of the Benelux Convention on Intellectual Property (BCIP) enable the trade mark proprietor to oppose identical or similar trade marks filed for identical or similar goods or services, where there exists on the part of the public a likelihood of confusion that includes the likelihood of association with the prior trade mark.
The Benelux Bureau of Intellectual Property rejected the opposition in its entirety against the different “Witte Wievenkaas” trade marks on the basis of the visual, conceptual and phonetic differences between these marks and Heksenkaas.
The Court of Appeal of The Hague however ruled that - merely because of the conceptual similarities - the pending oppositions against the “WITTE WIEVENKAAS” trade marks must succeed. The Court of Appeal considered that both trade marks contain the word “kaas” (“cheese”) and held that the most dominant, characteristic, distinctive and influential elements are the “Heksen” and “Witte Wieven” elements at the beginning of each trade mark.
Heksenkaas (“Witches’ cheese”) explicitly refers to and is positioned in the market as a cream cheese that contains “a hint of magic” of a witch. Common knowledge is that a witch refers to a female practitioner of witchcraft and the word “witch” has gathered negative connotations over time. Witte Wieven (literally translates to “white woman”) are often portrayed in Dutch mythology and legends as white ghosts, also female and malicious individuals, that frighten and live alone. The court ruled that, if broken down by type, Witte Wieven will be characterized by a significant part of the public as a witch and both figures have negative connotations. According to the Court of Appeal a significant part of the public will therefore consider both cheeses as cheeses originating from or designated for fictitious females with negative connotations. Therefore, given the conceptual similarities, the court considered the latter marks conceptually similar enough to cause confusion. The three opposition proceedings thus succeeded on appeal and the “Witte Wieven” trade marks were refused registration.
In conclusion, the Court of Appeal of The Hague acknowledged and broadened the important and decisive role of conceptual similarities when it comes to opposition proceedings in the Netherlands.