JUrISdIctIOn repOrt: netHerLAndS

FILInG In bAd FAItH
michiel rijsdijk
SteinhauserRijsdijk Advocaten
The Amsterdam Court has passed an interesting judgment regarding the
“ tHe reGIStrAtIOn In bAd FAItH
concept of “filing in bad faith” in trademark law.
ArrAnGement IS Intended tO
It is difficult to prove that a trademark has been filed in bad faith if the
cOrrect pOSSIbLe AbUSe OF tHe
infringer denies that it had any knowledge of earlier conflicting trademark
trAdemArK reGISter.” ."
use. Fortunately, the Benelux Convention on Intellectual Property offers
the trademark owner the possibility of construing such bad faith by citing
circumstances from which knowledge of the older rights is apparent.
A registration is also considered to have been made in bad faith if the
applicant should have known that a third party had made normal use of
a similar mark. That is the case, for instance, if such prior use is generally
known in interested circles.
Jensen Møbler, the renowned box spring manufacturer from Norway,
was confronted with a registration in bad faith. Kuperus Almelo, a Dutch
manufacturer of bedroom furniture, registered the Swensen trademark for
box springs in the Benelux countries before Jensen registered its Jensen In its interlocutory judgment, the court ruled that there was insufficient
trademarks in the Benelux countries.
evidence that Kuperus knew about Jensen’s prior use. However, it gave Jensen
the opportunity to prove that Kuperus should have known of the prior use.
Jensen claimed an injunction on any use by Kuperus of the Swensen
The order to produce evidence read as follows: Jensen must prove that it was
signs and removal of the trademarks. According to Jensen, Kuperus is
generally known in the bed industry before February 2003 that Jensen used
committing trademark infringement by using the aforesaid signs and is
its trademark for box springs. For that purpose, Jensen called 11 witnesses.
acting unlawfully.
Kuperus submitted nine written statements.
Jensen based its claims on, among other things, the filing in bad faith by
Kuperus of the Swensen trademarks. This means that Kuperus—because it
In its final judgment, the court ruled that it is apparent from the witness
knew or should have known about the earlier use by Jensen of the ‘Jensen’ and
statements that Kuperus knew about the prior use of the trademarks by
‘Jensenbed’ signs—should not have filed or registered its Swensen signs as
Jensen. The court thereby retracted its earlier ruling that Kuperus did not
trademarks. It is undisputed between the parties that the Jensen and Swensen
have direct knowledge, with reference to the standard presented below as
trademarks are confusingly similar.
recently formulated by the Dutch Supreme Court:
In its interlocutory judgment, the Amsterdam Court ruled that the issue of
“The requirements of due process mean that a judge who has established that
normal prior use in good faith by Jensen is important to this case. Between
a final ruling previously given by him but not recorded in a final judgment
2001 and February 2003, Jensen presented itself to dealers, sold box springs
has an incorrect legal or factual basis is authorised, after the parties have been
and advertised within the Benelux countries. Since the use of the Jensen sign
given the opportunity to present their views in that context, to reconsider
commenced before Kuperus filed its Swensen trademark, the question that
that final ruling to avoid passing final judgment on an incorrect basis.”
remains is whether the registration by Kuperus was made in bad faith.
A trademark owner unable to prove direct knowledge on the part of the
The registration in bad faith arrangement is intended to correct possible applicant will have to construe the applicant’s knowledge of the older rights
abuse of the trademark register. According to the court, it follows from that from other circumstances. Knowledge of the prior use in the interested circle
reason, i.e. the avoidance of abuse, that general knowledge must be proven in in which the applicant operates may suffice for that purpose.
a smaller group of relevant parties as opposed to a significant proportion of
the public for which the products or services are intended. According to the
court, what the applicant should have known must be asserted in the context
of the interested circles in which the applicant operates and from which it Michiel Rijsdijk is a partner at SteinhauserRijsdijk Advocaten. He can be
derives its knowledge of possible competing signs. contacted at: rijsdijk@steinhauserrijsdijk.nl
www.worldipreview.com World Intellectual property review September/October 2009 67
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