When I see both charts side by side, my first reaction is: infringement! The Ned T40 has copied a lot from the old, well-known Dutch Top 40, you might say. But the ruling from June of this year shows that the judge did not get around to comparing the two trademarks and their design at all. Reason: the trademark De Ned T40 is not used in the Benelux, according to the judge.
The radio station Ned.fm was founded in Spain in 2011 by a Dutch “radio hobbyist,” who targeted Dutch tourists and expats in Spain with this online station. In 2013, the hobbyist moved to the US, where he started a second radio station for The Ned T40, this time targeting Dutch people in America. So what are you whining about now, states Ned.fm. We are not at all concerned with listeners in the Benelux with our Ned T40 brand.
Accessible in the Benelux
All well and good, thought the Dutch Top 40, but those websites and radio broadcasts simply use the Dutch language and, moreover, are freely accessible to anyone in the Benelux. So it does involve use that is focused on the Netherlands or the Benelux.
But the judge sees it differently. The fact that the radio broadcasts of De Ned T40 are also accessible in the Benelux is not decisive. What matters is whether Ned.fm is trying to win listeners in the Benelux. Only if that is the case can you say that the station is aimed at the Benelux audience, according to the judge
According to the judge, there are many indications in this case that the Ned T40 trademark is not aimed at the Benelux. First of all, you obviously need the Dutch language if you want to reach Dutch people in Spain or the US. Moreover, for the American site, it has an American phone number and the logo contains an image of the US. As for the Spanish website, the court values the fact that the url has an .es extension and that the logo contains an image of Spain, in the colors of the Spanish flag. And finally, the company mentions again on Facebook that both channels are intended for Dutch listeners abroad.
In short, according to the judge, the use of the trademark De Ned T40 is not aimed at the Benelux and then you are out of the game with a Benelux registration. Hmmmm, that may be true, but that copying of the Dutch Top 40 does not sit well with me.