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posted 8 years ago
By using the slogan ‘Now. First…’, a vast majority of the Dutch would yell: ‘BAVARIA!’. The use of this slogan by Bavaria goes all the way back to 1985 and the brand Bavaria is widely known for it. Bavaria claims that this slogan is one of a kind, protected by copyright. In addition, the slogan was registered as a trademark in the Benelux Trademark Register in 1998 and 2006, therefore protected by trademark law.
Bavaria was not amused when earlier this year company Your Hosting advertised on the radio using the slogan ‘Now. First into the cloud’. Bavaria claimed that the use of this slogan infringed on their copyright and trademark right. The Court ruled that this claim is correct. The Court of Appeal, however, have a different opinion based on copyright and trademark law and, on this sunny day on which many Bavaria’s are being consumed, they have expressed this in a judgment.
Bottom line: this slogan is not protected by any copyright and there is no infringement on any trademark – the right that has been acquired by registering the slogan as a trademark in the Benelux Trademark Register.
Legal framework
Making use or taking advantage of each other’s slogans is quite common in marketing practices and sometimes reason for lively discussions. The legal framework is not always straightforward. Is it allowed or not? This is confirmed by the fact that both Court and Court of Appeal do not share the same opinion in this case. This case is particularly interesting, since Bavaria rely on their copyright, their trademark and tort/ slavish copying. I will discuss these legal grounds separately below.
Copyright
In first instance, the Court (preliminary rulings judge) had ruled that the slogan was protected by copyright. This was mainly substantiated by the pause that follows ‘Now’. This auditive element gave the slogan its unique character.
The Court held that:
37. A short sentence which is composed of a number of words can also qualify for protection by copyright, provided that it meets the above requirements. Considered separately, the words in such sentence cannot form one’s own intellectual creation by the author who uses them, but de sentence as a whole can, although it will only rarely be the case. It comes down to the fact that the author, via the selection, configuration and combination of words, expresses his creative mind in an original way and achieves a result that forms one’s own intellectual creation.
Bavaria’s slogan does not qualify for this criterion, according the Court of Appeal. The combination ‘Now. First…’ formed a normal, regularly used sentence with a common syntax in The Netherlands back in 1985. The Court of Appeal compares this with ‘Now. Let’s go.’ or ‘Now. That’s it.’. A conventional combination of words cannot be one’s own intellectual creation, thus failing to qualify for protection by copyright.
No protection, therefore no infringement. The Court of Appeal did not answer the question whether the slogans resemble each other in copyright perspective.
Trademark Law
Bavaria registered the slogan as trademark in the Benelux Trademark Register. The Court of Appeal (currently) assume the validity of the trademark, at least they do not assess this validity.
Bavaria state the rights that go with the trademark have been infringed, trademark rights. By using this sign – the slogan – Your Hosting would have (i) unjustified advantage from the distinctiveness or reputation of these brands, (ii) detract from their distinctiveness, and or (iii) detract from their reputation. This is also explained as if Your Hosting are piggybacking on the awareness of the Bavaria brand and benefit from everything Bavaria has built as a brand (investing extensive marketing budgets).
The Court of Appeal:
52.However, in the opinion of the Court, Bavaria have – regarding the dispute by Your Hosting – insufficiently substantiated and proven that the economic behaviour of the average consumer of the goods or services for which their trademarks have been registered, has changed as a result of the use of the sign by Your Hosting, or that a considerable chance exists that this behaviour will change in the future.
53.Concerning (iii), no facts or circumstances have emerged based on which the Court could conclude that the sign of Your Hosting detracts the reputation of Bavaria’s trademarks. In particular, it is not substantiated given or proven that the cloud services for which Your Hosting use this sign, appeal to the senses of the relevant public in such a way that the attractive force of the Bavaria brands reduces.
In other words: it has not been proven that Your Hosting has gained more customers as a result of using the slogan. Nor has it been proven that Bavaria gained less customers or that the brand has become less attractive as a result of the use of the slogan by Your Hosting.
Conclusion: no infringement on the trademark of Bavaria. There was also no infringement on the copyright. With this outcome the Court of Appeal also rejects the claim of tort: the act of using the slogan is not illegal.
Result: the verdict in first instance has been annulled. The legal costs paid by Your Hosting to Bavaria must be refunded and Bavaria must compensate the legal costs of Your Hosting: over €63,000.-.
This judgment shows that there is still room to make use of another company’s slogan. Even if it concerns a slogan that enjoys considerable awareness. Should your company consider something similar and would like to discuss this with an Intellectual Property Lawyer? Please, feel free to contact Marieke Kleijn: marieke.kleijn@fifthadvocatuur.nl.
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