Dutch cleaner manufacturer De Bever – owner in the EU and the Benelux of the trade mark ‘Blue Wonder’, lost summary proceedings on trade mark infringement before the Presiding Judge of the District Court The Hague (Chr.A.J.F.M. Hensen) against several Van der Graaf companies who manufacture and sell ‘Rio’ cleaners, amongst which ‘Fantastic Blue’. With a decision of April 22, 2009 the Presiding Judge ruled that the ‘Blue Wonder’ trade mark was not infringed. From the facts as outlined in the decision it follows that the case had also an opposition proceedings background.
In 2007 Van der Graaf had registered the trade mark ‘Blue Miracle’ in the Benelux against which De Bever had started opposition proceedings. The proceedings were closed after De Bever furnished proof of use of the Blue Wonder trade mark and withdrawal of the registration by Van der Graaf. Apparently Van der Graaf switched to ‘Fantastic Blue’ and it was free to do that. The Presiding Judge found no risk of confusion after comparing the trade marks as registered with the signs as used, applying the global assessment test in view of connected factors as – especially – the measure of similarity of the goods involved, the similarity of the trade mark and the sign used, and the distinctive character of the trade mark (inherent or by use on the market).
As for the goods the Presiding Judge finds a maximum similarity. However the similarity between the trade mark and the sign is found to be too small: from an visual, auditive and conceptual perspective there is only similarity with regard to the ‘Blue’ element in the trade mark and the sign. This element however cannot raise a risk of confusion for the Presiding Judge because it is descriptive and accordingly not distinctive. Furthermore the eyecatching Rio logo is used on the Rio product. Even if that logo is not take into account there is a great distance between BLUE WONDER and Rio Fantastic Blue. Even if their would be a certain conceptual similarity a possible confusion is outweighed by the background of all figurative elements in the Rio Fantastic Blue sign taken as a whole.
De Bever’s claim based on risk of confusion is thus dismissed as well as De Bever’s secondary dilution claim: the Presiding Judge finds no prove that Blue Wonder is a well-known trade mark, nor that there is a real dilution, let alone dilution without a valid reason. De Bever’s argument that Van der Graaf had the alternative of adding ‘Allesreiniger’ (multi-purpose cleaner) is not enough, because ‘Allesreiniger’ is generic and accordingly it is hard to imagine how Van der Graaf could use such wording as a distinctive sign.