Everyone knows how important it is to look after the trademark and domain name portfolio before a new plan is launched. Yet there are still some large companies which seem to overlook this relevance. You might know the Dutch telecoms operator KPN, that acquired Getronics in 2007. A few days after the press wrote about rumours of this acquisition, a certain De Vries immediately registered the domain name kpngetronics.nl and the trademarks 'kpngetronics' and 'KPNG'. He was also the one who, shortly after the press releases, registered combinations such as rtltalpa, barclays, abnamro and essentnuon: names of merging parties. It did not take long before De Vries was ordered in summary proceedings to stop any use of the trade marks KPN and GETRONICS and any combinations. He also had to transfer the domain name: the combined name is obvious after an acquisition, and this was clearly abuse. His argument "purely coincidential" did not impress the judge. Recently also the Benelux Bureau of Intellectual Property (BOIP) decided that the trademarks 'kpngetronics' and 'KPNG' cannot be registered for a long list of products Mr. De Vries applied for. Nevertheless, KPN and Getronics have not fully won their case. KPN must bear that KPNG is registered as a trademark for calculators and computers. I think that the earlier injunction in summary proceedings (no combined trademarks) does not see on this trademark. Thus, KPN will have to allow for use of a trademark that is quite similar to the KPN mark, but (according to the BBOIP) not confusingly similar. Ten against one that KPN will initiate proceedings to stop Mr. De Vries after all. Maarten Haak
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Everyone knows how important it is to look after the trademark and domain name portfolio before a new plan is launched. Yet there are still some large companies which seem to overlook this relevance. You might know the Dutch telecoms operator KPN, that acquired Getronics in 2007. A few days after the press wrote about rumours of this acquisition, a certain De Vries immediately registered the domain name kpngetronics.nl and the trademarks 'kpngetronics' and 'KPNG'. He was also the one who, shortly after the press releases, registered combinations such as rtltalpa, barclays, abnamro and essentnuon: names of merging parties. It did not take long before De Vries was ordered in summary proceedings to stop any use of the trade marks KPN and GETRONICS and any combinations. He also had to transfer the domain name: the combined name is obvious after an acquisition, and this was clearly abuse. His argument "purely coincidential" did not impress the judge. Recently also the Benelux Bureau of Intellectual Property (BOIP) decided that the trademarks 'kpngetronics' and 'KPNG' cannot be registered for a long list of products Mr. De Vries applied for. Nevertheless, KPN and Getronics have not fully won their case. KPN must bear that KPNG is registered as a trademark for calculators and computers. I think that the earlier injunction in summary proceedings (no combined trademarks) does not see on this trademark. Thus, KPN will have to allow for use of a trademark that is quite similar to the KPN mark, but (according to the BBOIP) not confusingly similar. Ten against one that KPN will initiate proceedings to stop Mr. De Vries after all. Maarten Haak