Of the total population of the Netherlands of 16.8 million people, 2.2 million have seen the final episode of the second season of "Heel Holland bakt". This makes it one of the most popular television shows in the Netherlands of the past few years.
"Heel Holland bakt" is the Dutch version of the British television hit show "The Great British Bake Off"; it could be translated as "the whole of Holland is baking". Although the Dutch show is very popular, the trade mark application for Heel Holland Bakt was refused by the Benelux Office for lack of distinctive character and descriptiveness.
Descriptiveness of a sign in one of the languages of the Benelux countries (French, Dutch or German) is a common problem for Benelux trade mark owners. So it is in this case. The Dutch wording "Heel Holland bakt" is not descriptive for the French speaking part of the Benelux public, but was found descriptive for the Dutch speaking public.
Fortunately, it is possible to get a descriptive sign registered in case it acquires distinctiveness after all. In order to prove acquired distinctiveness the applicant must demonstrate that the sign is perceived by the relevant public as a trade mark that distinguishes goods or services of the applicant through its very use. The Benelux Court of Justice has decided that a sign that was not distinctive originally can only be registered if acquired distinctiveness is demonstrated prior to the application date.
With respect to trade mark rights the Benelux countries are one indivisible territory. For proving acquired distinctiveness through use this could form a further complication. The point is that the Dutch speaking public does not only live in The Netherlands but also in a part of Belgium (Vlaanderen). As "Heel Holland bakt" is only used as a trade mark in the Netherlands (the Belgian counterpart of "The Great British Bake Off" being called "De Meesterbakker") problems occur.
A sign can only be registered based on acquired distinctiveness if the sign is qualified as a trade mark in the whole of Benelux. Therefore, acquired distinctiveness must always be demonstrated in the entire Benelux territory. So if a sign that is descriptive in Dutch is only used in Belgium, it will be very difficult to proof that the sign acquired distinctiveness in the whole of the Benelux.
However, there is an exception to this rule: if a trade mark has an inherent geographical boundary, acquired distinctiveness should only be proved within this specific territory.
For the case at hand, "Heel Holland bakt" this means that proof of intensive use in The Netherlands (Holland) alone is sufficient to get the mark registered. And that is exactly what happened with the trade mark Heel Holland bakt. The proof of intensive use changed the minds of the examiners of the Benelux Office and the mark is now registered for all goods and services applied for.
Most of the readers of this article will not very often be confronted with signs that are descriptive in Dutch, let alone marks that are only used in the Dutch speaking part of Belgium or in the Netherlands. It is much more common that a sign is filed as a trade mark which could be considered descriptive in English. For those trade mark owners it is important to keep in mind that the general Benelux public is sufficiently familiar with the English language. Assuming that the meaning of an English term is understood in every part of the Benelux territory, acquired distinctiveness has to be proven in every part of the Benelux
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Maaike Witteman |
V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu
