SPAM lacks reputation in relevant Member States despite Monty Python sketch

Tuesday, 12 November 2013

Do not worry; this note is not about spam as we know it. On October 9, 2013 the Presiding Judge of the District Court The Hague (P.H. Blok) delivered a judgment in Hormel Foods Corporation v Dukka B.V. and Van Doorne Beverages B.V. The case is about the alleged infringement of the CTM ‘SPAM’ that Hormel has used for decades for canned meat products and which may remind readers, especially those from the UK, of the 1970 Monty Python ‘Spam’ sketch. Hormel sought to invoke its trade mark rights against Dukka and Van Doorne for marketing an energy drink under the name ‘SPAM’. 

Hormel brought a claim before the Presiding Judge of the District Court The Hague for, inter alia, trade mark infringement of its CTM against Van Doorne and Dukka on the basis of article 9(1)(b) and (c) CTMR.

Hormel had registered the CTM ‘SPAM’ not only for meat products (class 29), but also for clothing (class 25) and coffee, tea and confectionery (class 30). Dukka, the proprietor of the Benelux word and figurative trade mark ‘SPAM’ for energy drinks, and Van Doorne, the producer and exporter of the ‘SPAM’ energy drinks, sought to have Hormel’s ‘SPAM’ CTM revoked for non-use before OHIM. OHIM upheld Dukka’s claim in part and declared the CTM to be revoked in respect of all classes in which it was registered, save for class 29 (meat products).

The District Court The Hague rejected Hormel’s claim on the basis of article 9(1)(b) CTMR because canned meat is not similar to energy drinks. The goods are, according to the Court, not interchangeable and incompatible as they will normally not be enjoyed together (the possibility that meat and energy drinks can be consumed together did not alter the Court’s finding). Furthermore, it was held that there is no competition between meat products and energy drinks. Therefore, the District Court held no risk of confusion to be present.

Notably, when Dukka sought to obtain a CTM for ‘SPAM’ in class 32 and 33 (alcoholic and non-alcoholic beverages), the sign was refused registration as OHIM in opposition proceedings installed by Hormel held that there would be a risk of confusion between Hormel’s ‘SPAM’ mark and Dukka’s sign on the basis of article 8(1)(b) CTMR. The District Court The Hague, however, held OHIM had delivered its decision when the CTM was still a valid trade mark for drinks, which it no longer is, so that its judgment does not conflict with OHIM’s ruling in the opposition proceedings.

Hormel’s claim under article 9(1)(c) CTMR was also rejected. Following the CJEU’s judgment in Pago, protection under this provision is offered if the CTM is known by a significant part of the relevant public in a substantial part of the Community. In accordance with the particular facts of a case, one single Member State can constitute such a substantial part. Hormel established its SPAM mark has a repute in the UK. This, however, does not mean that the reputation of Hormel’s mark extends to the entire Community. For protection under article 9(1)(c) CTMR to be offered, the District Court stresses, Hormel has to show Dukka’s use of the SPAM sign takes unfair advantage of or is detrimental to the distinctive character or repute of Hormel’s trade mark.

Hormel failed to establish this. Hormel did not show its trade mark has a repute in the Member States in which Dukka uses its sign. Furthermore, it was not established Hormel uses its trade mark in the Member States in which Dukka uses its signs. As Hormel also failed to show Dukka uses or is planning to use its sign in the UK, Hormel could not rely on the protection offered by article 9(1)(c) CTMR.

In arguing its ‘SPAM’ mark has a reputation outside the UK, Hormel relied heavily on the Monty Python ‘Spam’ sketch. The District Court, although pointing out trade marks can acquire a reputation merely though publicity, held Hormel’s ‘SPAM’ mark cannot be said to have a reputation as a result of the sketch. In the three and a half minutes long sketch in which the word ‘spam’ is said over a hundred times, the word is not used in relation to the goods of Hormel, nor are Hormel’s products shown. It therefore cannot be established that the relevant public or people who know the sketch are aware that ‘SPAM’ is a trade mark for canned meat. The fact that the sketch dates from 1970 also contributed to the Court’s finding. Despite the sketch still being available to watch on the Internet, it cannot be established it is still known amongst a significant part of the relevant public.

As Hormel had failed to show its trade mark has a repution in the Member States in which it invokes the mark, Hormel could also not rely on article 6bis of the Paris Treaty.

Hormel’s claim to declare Dukka’s Benelux trade marks invalid on the basis that they were applied for in bad faith was rejected because Dukka did not have the intention to prevent Hormel from using its ‘SPAM’ mark. According to the Court, this clearly follows from the registration of ‘SPAM’ as a trade mark for drinks, which does not conflict with the meat products for which Hormel’s ‘SPAM’ mark is registered.

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