The Netherlands: POPSTARS and POPSTARS –THE RIVALS held to be invalid trade marksTuesday, 12 November 2013
On October 23, 2013, the District Court The Hague (F.M. Bus) held that the trade marks POPSTARS and POPSTARS - THE RIVALS lack a repute and are no well-known marks under article 6bis of the Paris Convention.
Screentime licenses the production and broadcasting of the talent show television series ‘Popstars’ to broadcasting companies all over the world, including VT4 in Belgium and SBS in the Netherlands. Screentime is the proprietor of the Benelux word marks POPSTARS and POPSTARS - THE RIVALS (hereinafter also: the ‘Popstars’-trade marks).
In October 2012, SBS indicated it had the intention to broadcast a talent show series called ‘The Next Popstar’, which caused Screentime to take action against SBS for trade mark infringement of the ‘Popstars’-trade marks.
In summary injunction proceedings, the Presiding Judge of the District Court The Hague (November 15, 2012, P.H.Blok) ordered SBS to cease and desist the use of ‘The Next Popstar’ because it infringed Screentime’s marks.
In the current proceedings on the merits, however, the District Court The Hague held SBS did not infringe Screentime’s trade marks and held POPSTARS and POPSTARS - THE RIVALS to be invalid for television and other audiovisual programmes.
As a starting point, the District Court held the ‘Popstars’-trade marks to be descriptive of television and other audiovisual programmes in the Benelux as in such programmes, a contest is held to select a new future pop star. According to the Court, despite the trade marks consisting of English terms, the meaning of POPSTARS and POPSTARS - THE RIVALS is clear to the Dutch, German and French-speaking public of the Benelux as these terms are frequently used, for example in film titles.
Screentime’s claim that the ‘Popstars’-trade marks had acquired distinctiveness through use was rejected. Considering the evidence submitted, the District Court held Screentime’s use of POPSTARS and POPSTARS - THE RIVALS had been insufficiently long-standing and intensive to prove acquired distinctiveness through use at the time the Court delivered its judgment. In determining this, the Court relied on the distinctiveness the marks had allegedly acquired among the relevant public in Belgium, as Belgium constitutes a substantial part of the Benelux. In other words, if no distinctiveness had been acquired in Belgium, no distinctiveness had been acquired in the Benelux, so that Screentime’s claims would be rejected. A number of considerations contributed to the finding that the ‘Popstars’-trade marks had not acquired distinctiveness through use. According to the Court, there was no evidence of substantial publicity of the ‘Popstars’ series, in the light of which publicity regarding artists who had participated in the talent show should be disregarded. Furthermore, the Belgian public knew ‘Popstars’ because they had access to the Dutch and French versions of the show, which does not show the ‘Popstars’-trade marks had acquired distinctiveness among a substantial part of the Belgian public.
Screentime also unsuccessfully invoked article 6bis of the Paris Convention, arguing that POPSTARS and POPSTARS - THE RIVALS are well-known marks within the meaning of this provision. Contrary to Screentime’s claim, the District Court held that for a mark to be protected under article 6bis, a greater level of knowledge of the mark in issue is required among the relevant public of the State in which this provision is invoked than under article 5(2) TMD. The legislator, according to the Court, had intended to treat marks with a reputation under article 5(2) TMD differently from well-known marks within the meaning of article 6bis. This also follows from the more extensive rights that are granted to well-known marks under the TMD as opposed to marks with a repute.
Screentime had not submitted enough evidence showing its marks are well-known at the time the Court delivered its judgment (2013). Screentime relied on a number of publications in which artists were named who had participated in the ‘Popstars’ series. As the ‘Popstars’-trade marks lack inherent distinctiveness, evidence showing relatively long-standing and intensive use of the marks was required to satisfy the strict requirements of article 6bis, which Screentime had not submitted.
Although SBS won the case, in practice its relevance may be questioned, as SBS had upon the action taken by Screentime changed the name of its talent show to ‘The Next Poptalent’, which apparently generated quite disappointing TV rating when it was broadcasted in the first half of 2013.