A mr. Van den Berg runs a small garage in Apeldoorn (the Netherlands), named ‘Porschespecialist Van den Berg’, apparently since 1996. In an interview in Dutch paper NRC Handelsblad of January 24, 2013 Van den Berg is characterised as a great Porsche lover who thinks that classic Porsches are a driving legacy. Van den Berg repairs, services and sells classic Porsches. SinceMarch 11, 1999 Van den Berg owns the domain name ‘porschespecialist.nl’, which he uses for his website www.porschespecialist.nl.
At the top of each page of the website Van den Berg uses the sign ‘porschespecialist’ in small capital in a logo, whilst on the righthand side of the page Van den Berg uses the sign ‘porschespecialist VAN DEN BERG Apeldoorn B.V.’ Furthermore Van den Berg’s logo contains an illustration showing the outline of a ‘Porsche 911’, which is visible on each page of the website (as is the logo itself).
In 2008 Dr. Ing. H.C.F. Porsche AG – hereinafter Porsche –decided to send a cease and desist letter (refrain from any use of the sign ‘Porschespecialist Van den Berg’ and the use of the domain name porschespecialist.nl) based on trade mark infringement and tort (use of a similar trade name which provokes confusion) to Van den Berg, followed by legal proceedings on the merits, started before the District Court of The Hague. With a decision of July 27, 2011 the District Court rejected Porsche’s claims. Central question for the Court to decide- it ruled – was whether Van den Berg as a non-authorised dealer is permitted to use for its business, which happens to be mainly the resale and repair and service of second hand ‘Porsche’ cars as well as the trade in spare parts for said cars, the trade name ‘Porschespecialist Van den Berg (Apeldoorn)’ and is further more permitted to exploit a website with the domain name ‘porschespecialist.nl’ and the signs used on said website, amongst which Van den Berg’s logo.
With regard to the alleged trade mark infringement the District Court decided that Van den Berg could rely on article 2.23 par. 1 Benelux Convention on Intellectual Property (BCIP): exhaustion. With reference to the ECJ’s BMW vs Deenik decision (1999) the District Court ruled that the trade mark may not be used in advertising from a reseller in such a way that it might provoke the impression that there is a commercial connection between the reseller and the trade mark owner, and more especially that the business of the reseller forms a part of the distribution network of the trade mark owner or that there is a special connection the business of the trade mark owner and that of the reseller. If however there is no risk at the public to create the impression that there is a commercial connection between the reseller and the trade mark owner, the fact as such that the use of the trade mark yields a profit for the reseller, because – otherwise correct and loyal – advertising for the sale of the goods bearing the trade mark gives the appearance of his business a quality boost, is not a valid reason to make an exception to the exhaustion rule. After all a reseller who sells second hand cars of a particular trade mark and who is actually specialized in such sales or is a specialist, can not inform his customers without using the trade mark. According to the Court such use for information purposes is necessary to ensure the right to re-sales (article 7 of the European Trade Mark Directive). These points of departure lead the Court to the conclusion that there is no actual risk that the trade mark use by Van den Berg can create the impression that there is a commercial connection between Van den Berg and Porsche, more especially that the business of Van den Berg belongs to the distribution network of Porsche or that there is a special connection between the businesses of Van den Berg and Porsche. First of all the Court considers relevant that Van den Berg uses the trade mark Porsche in all signs concerned consistently with the addition ‘specialist’, which addition does not – just like that – create the impression at the public that Van den Berg belongs to the dealer network. On the contrary: Van den Berg does advertise itself as ‘specialist’ and not as official dealer. Secondly the content of Van den Berg’s website is not such that it must be held that Van den Berg does not operate loyal towards Porsche. The use of the sign ‘porschespecialist’ is restricted to a small mention in a logo of Van den Berg on the left upper side of a page. The fact that the contours of a 911 are shown at the bottom of each page in a nondescript grey tint, does not make this different. Thirdly, Van den Berg has placed a disclaimer on the website: ‘Porschespecialist Van den Berg is not in which way whatsoever connected with Porsche AG cars or Pon. Porsche only refers to the car type.’ Each possible impression of a dealership or a special relationship with the trade mark owner is taken away by this disclaimer.
With regard to the use by Van den Berg of the sign ‘Porsche Van den Berg Apeldoorn’ without the addition ‘specialist’ the Court decides that Van den Berg is not permitted to use that sign. However the Court refrains from imposing an injunction on Van den Berg for said use, because – to be short – Van den Berg challenged said use and Porsche – according to the Court –lacked to substantiate its statement to present evidence for use of said sign by Van den Berg.
Upon appeal by Porsche with a decision of January 15, 2013 the Court of Appeal of The Hague annuled the decision of the District Court and granted Porsche amongst others an injunction against Van den Berg. Van den Berg needs to refrain from (i) the use of ‘Porschespecialist Van den Berg’ as a trade name or as trade mark (to distinguish goods and/or services), (ii) the domain name ‘www.porschespecialist.nl’ (note GvR: that’s a website, not a domain name), (iii) the Van den Berg Porschespecialist logo (see screenshot above) and (iv) other tradenames, domain names and other signs to distinguish goods and/or services (which are identical or similar to the goods and services for which the Porsche trademarks are registered) containing the trade mark Porsche.
Central part of the Court of Appeal’s decision is that according to the Court of Appeal the use of Porsche by Van den Berg in the litigious signs is not honest use. The use of the word ‘Porsche’ or the word ‘porschespecialist’ by Van den Berg in its trade name or in a sign which Van den Berg uses as ‘a trade mark’ (to distinguish goods and services) can – according to the Court of Appeal – create the impression at the relevant public (in this case: Porsche-owners in so far as the maintenance of their Porsches is concerned and the purchase of spare parts, and (potential) buyers of used cars) that there is a special connection between the businesses of Van den Berg and Porsche. There is an actual chance that (a substantial part of) the relevant public will see an indication in such use that there exists a connection between the goods and services of Van den Berg and the goods and services of Porsche.
The Court of Appeal finds that the word ‘specialist’ does not take away said impression. According to the Court of Appeal it is incorrect to hold that(a substantial part of) the relevant public will understand the sign ‘porschespecialist’ in a trade name or in a sign used as a trade mark in such a way that the business concerned is therefore not an official Porsche dealer. Above that the Court of Appeal finds that dishonest use can already be assumed if it might create the impression at the public that there is connection between Van den Berg and Porsche, which does not need to be an official dealership. According to the Court of Appeal Van den Berg’s Porsche use might create such impression. Last but not least to come to this conclusion the Court of Appeal takes into account that Porsche enjoys notoriety in the Benelux, which might enable Van den Berg to profit from the trade mark in order to market its own goods and services.