In appeal the company Lief! finally won its case against baby goods retailer Prénatal. Since 2005 Lief! successfully sold baby clothes under the trademark LIEF! (the Dutch word for ‘sweet’). Last year Prénatal started using the word ‘lief’ on its products. Based on trademark infringement Lief! started legal proceedings at the district court of Rotterdam, but lost the case. According to the judge the use of the word ‘lief’ by Prénatal was to be considered as pure decoration and not as use as a trademark. Prénatal did therefore not infringe the trademark rights of Lief!. In appeal Lief! was proved right. Prénatal must stop any use of the sign ‘lief’. The court of appeal decided that the trademark LIEF! is distinctive or at least has become distinctive due to extensive use. Since both signs are similar and being used for the same products, the use of the word ‘lief’ by Prénatal causes a likelihood of confusion. The fact that Prénatal also uses its own trademark on its products does not make this any different. It is not unusual that different trademarks are noticeable on products. Even trademarks of different owners. Besides that, the Prénatal trademark is not always visible. Within four weeks Prénatal must remove all baby and children cloths with the sign ‘lief’ from its shops. Kim Braber
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office Emerald House Jozef Israëlskade 48-G Amsterdam, the Netherlands t +31 (0)20 - 305 3066 www.hoogenhaak.nl |
post PO Box 76780 1070 KB Amsterdam e info@hoogenhaak.nl f +31 (0)20 - 305 3069 chamber of commerce 34314579 |
In appeal the company Lief! finally won its case against baby goods retailer Prénatal. Since 2005 Lief! successfully sold baby clothes under the trademark LIEF! (the Dutch word for ‘sweet’). Last year Prénatal started using the word ‘lief’ on its products. Based on trademark infringement Lief! started legal proceedings at the district court of Rotterdam, but lost the case. According to the judge the use of the word ‘lief’ by Prénatal was to be considered as pure decoration and not as use as a trademark. Prénatal did therefore not infringe the trademark rights of Lief!. In appeal Lief! was proved right. Prénatal must stop any use of the sign ‘lief’. The court of appeal decided that the trademark LIEF! is distinctive or at least has become distinctive due to extensive use. Since both signs are similar and being used for the same products, the use of the word ‘lief’ by Prénatal causes a likelihood of confusion. The fact that Prénatal also uses its own trademark on its products does not make this any different. It is not unusual that different trademarks are noticeable on products. Even trademarks of different owners. Besides that, the Prénatal trademark is not always visible. Within four weeks Prénatal must remove all baby and children cloths with the sign ‘lief’ from its shops. Kim Braber