The Court of Amsterdam has decided in summary proceedings that the use of trade names Local Affairs and Studio Local Affairs constitutes an infringement of the trade name Local and on the corresponding Benelux device mark.
The claimant uses the tradename Local for activities in the field of the renovation and re-development of real estate in the Randstad, a large urban area in the west of The Netherlands, and has shown sufficient evidence of these activities by means of newspaper articles, flyers and printouts from their website.
As rights on a trade name do not come to existence by the mere registration of the trade name but by doing business under a certain name in a certain territory, the claimant sufficiently showed to have established trade name rights on the trade name Local. The claimant furthermore registered Benelux trade mark rights on its Local device mark in 2012. Only last summer the claimant became aware of the plans for a new architectural firm under the trade name Studio Local Affairs in Amsterdam, also in the Randstad.
Even though the English language is commonly known by the Dutch public, Local is not considered descriptive in any way nor is it a commonly used expression in connection with the area of business of both parties. It can thus be considered distinctive. As the element Studio is commonly used for architectural firms, it is considered rather descriptive. The dominant element in Studio Local Affairs is therefore Local.
In actual use it is even likely that the element Studio will not be used. This is supported by the fact that the defendant uses the email address @localaffairs instead of @studiolocalaffairs. The addition of the element Affairs does not make the overall impression of the trade name Studio Local Affairs very different from Local.
Due to the similarities between the business of re-development of real estate and the business of an architectural firm, both active in the field of real estate, and the fact that both parties operate or intend to operate in the same geographical area, there is a danger of confusion if both trade names were to co-exist. As the claimant has shown to co-operate with architects for their re-developments as well, the parties may appear to be a co-operation or to be somehow related.
The Court has therefore honoured the claimant's claim to have the defendant cease the infringement of its trade name and decided that the defendant should cease all use of (Studio) Local Affairs as a trade name, a domain name or even in an email address. In this case there is no room for two Locals in the same locality.
As for the secondary claim based on infringement of claimant's Benelux trade mark right, the Court refers to the reasoning used in connection with the infringement on trade name Local. Since the element Local is the most distinctive and dominant element in the claimant's device mark, and the defendant intends to use a sign similar to the claimant's device mark for similar services, there is danger of confusion with the relevant public.
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Denys Bertels |
V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu
