Luxury German car manufacturer Dr. Ing. h.c. F. Porsche, usually referred to as Porsche, have successfully invalidated several Benelux registrations for the mark P@RSCHE. The registrant for P@RSCHE mark was an individual who has not yet been identified.
In 2014 the defendant registered several trade marks in The Benelux for the mark P@RSCHE for goods and services in classes 9, 12, 28 and 42. The defendant also filed applications in the EU but did not continue with the registration of those marks.
Dr. Ing. h.c. F. Porsche have registrations worldwide for the mark PORSCHE and similar marks, including EU registrations. The invalidity applications filed by Porsche were based on the similarity between the marks PORSHE and P@RSCHE, which could lead to confusion on the part of the public. The applications also claimed that the use of the sign P@RSCHE could take unfair advantage or be detrimental to the distinctive character or the repute of the PORSCHE trade mark. Porsche also claimed that the P@RSCHE trade marks were filed in bad faith.
Porsche requested an injunction in relation to the infringement of their marks. They also claimed the full costs of the proceedings as well as a payment of €75.000 for penalties relating to a previous dispute with the same defendant.
The defendant argued that the marks were not similar and that no oral or visual or conceptual similarly would exist. On 26 October 2016 the District Court in The Hague issued a decision in favour of Porsche and invalidated the registrations. However, the P@RSCHE marks had not been used and the Court dismissed the request for an injunction.
In 2012 the same defendant had previously applied to register the mark PORSCHE. In this case the court held that the application was filed in bad faith and ordered that the defendant cease and desist from filing an EU or Benelux trade mark containing the word PORSCHE. The Court of Appeal in The Hague ordered that the defendant must pay a penalty of 25.000 Euros each time the order was breached.
Despite the previous case, the District Court in The Hague denied Porsche's request for the payment of €75.000 as penalties as the previous case had referred to the identical mark PORSCHE and did not refer to similar marks. The penalty was not therefore applicable to the current dispute.
This case demonstrates how disreputable people or organisations may seek to profit from the repute of well known brands by filing similar marks. It highlights the importance of proactively protecting your brand and your trademark to ensure that its reputation is not diluted by such action.
Posted by: in: EU/International, Trade Marks