In its decision of January 27, 2009 the Amsterdam Court of Appeal ruled in favour of French-based Hachette Filipacchi Presse S.A. (hereinafter Hachette), publisher of the well known fashion magazine ‘Elle’ (distributed in France since 1945 and in the Netherlands since 1976, with – since 1989 – a Dutch edition) in trade name/trade mark infringement litigation initiated by Hachette against the Dutch clothing and accessories company WE Netherlands B.V. (hereinafter WE).
WE used the trade names ‘HIJ’ , ‘ZIJ’ – for the record: Dutch for he and she – and ‘YOU’ – for the record: ‘jij’ in Dutch – as trade names till 1999. From thereof WE changed to and operates only one name: ‘WE’ (in Dutch; ‘wij’) or word combinations in which WE form the characteristic element. The trade names WE, HIJ and SHE are very well known in the Netherlands.
Hachette’s core business is putting ‘Elle’ on the market, but – on a limited scale – Hachette is engaged in the trade of clothing and related articles. Accordingly Hachette had granted a license to Euretco B.V. / Fashion Brands Collections B.V. to operate clothing stores in the Netherlands under the name ‘Elle’.
Apparently Hachette found WE in its way, because in first instance – at the District Court Utrecht – Hachette claimed annulations by the District Court of several trade marks (for some as a whole, for others for particular classes) owned by WE that might be problematic for the use of Elle in the Netherlands, for example ELLE & LUI, ELLE, SHE, HIJ, ZIJ, HE, HIS, YOU, YOU & ME. Furthermore Hachette claimed a declaration from the District Court that Hachette would not act unlawful (tortuous) against WE by operating shops under the name ELLE with clothing under the trade mark ELLE. WE counterclaimed relying on art. 5 of the Dutch trade name act which protects the earlier user of a trade name against later use of an identical or similar trade name by a third party due to which it has to be feared that the public might confuse the undertakings of earlier and later user.
The District Court (2006) rejected the counterclaim: Hachette convinced the Court that the use of Elle would not provoke a risk of confusion nor a risk of dilution with regard to WE’s previous trade names WE, HIJ and ZIJ. The District Court relied heavily on the established fact that the trade mark Elle is very well known at a large public, especially because of the magazine Elle. The trade mark Elle has an own identity that is linked with the specific style of writing of the trade mark Elle, as depicted above. The District Court furthermore established that the name Elle and the trade names WE, HIJ and ZIJ had coexisted for a long time without confusion. The public – considered the District Court – would rather link the trade name ELLE with the already existing name ELLE than with (the trade marks and the trade names of) the undertaking of WE, especially since Hachette would only use ELLE in the specific style of writing. The fact that Hachette, until the District Court’s decision, had only used ELLE as a trade mark was thought to be irrelevant: the reputation is linked with the name ELLE and the public will not make a difference between the the trade mark and the trade name. No confusion therefore, the less because WE only uses Dutch and English trade names, and not French, like ELLE. The simple fact that the trade marks and trade names concerned are personal pronouns was found to be not enough to come to another conclusion.
With regard to Hachette’s claim the District Court found that WE’s ELLE and ELLE & LUI trade marks could be annulled because of lack of normal use (five years period). The SHE trade marks however survived! The District Court came to the conclusion that Hachette was no interested party for an annulation of those trade marks, because WE only relied on the trade names WE, HIJ and ZIJ in this case and not on the SHE trade marks.
WE and Hachette both appealed but unfortunately the Court of Appeal does not contain a clue against which part of the decision Hachette appealed. Both parties discussed the question to what extent the use of the names ‘WE’ by ‘WE’ and ‘ELLE’ by Hachette should (or should not) be qualified as trade name use, or only as trade mark use and/or as part of a trade name, but the Court of Appeal finds no good reason to deal with this question. With regard to WE’s appeal the Court of Appeal decided as follows: the Court of Appeal confirmed the District Court’s decision that the use of the trade name ELLE would not provoke a risk of confusion or dilution for the public with regard to WE’s trade names. The public will not – as WE argued – consider ELLE as a chic variation on the series of trade names used by WE, especially because of the similarity with ZIJ. The Court of Appeal rejects WE’s viewpoint that a risk of confusion occurs already (immediately, as a matter of course) because WE uses personal pronouns as trade name, even if such a pronoun is used in a foreign language. The Court of Appeal believes that this would give rise to an unacceptable overvaluation of the criterion of conceptual similarity: it follows Hachette’s argument that a linguistic exercise as WE had put forward can not be expected from the average public. Furthermore the Court of Appeal decides that for establishing (the absence of) one may take into account that the public that is faced with an ELLE shop obviously associates this with the magazine ELLE and with Hachette activities using ELLE in the ladies’ fashion area. Thus WE’s appeal failed.