Risk of Confusion
Heijmans, over 100 years old and one of the largest construction companies in the Netherlands, argued to the Benelux Office for Intellectual Property (BOIP) that the trademarks Heijmans and Heijvast are very similar. And since Heijvast wants to register its trademark for goods and services in the same industry as Heijmans, confusion is a real concern.
Monopolizing a Common Surname
However, the Rotterdam-based company was unaware of any wrongdoing. “Vast” looks quite different from “Mans,” claimed Heijvast, which also pointed out that several other company names begin with “Heij.” “Why are you making a problem specifically with our name?” they argued. Moreover, the name Heijvast is derived from the surname of our founder, Mr. Den Heijer. So, in fact Heijmans is trying to monopolize a common Dutch surname, which is not allowed because trademark law states that a trademark holder cannot prevent someone from using their own name, according to Heijvast.
Swift Dismissal
If Heijvast seriously believed it had a valid point, BOIP quickly dismissed it in its ruling. The trademark office clarified that the legal provision in Benelux trademark law concerning the use of your own name applies to the use of a natural person’s name in economic activities, not its use as a trademark, and certainly not for its registration as a trademark. For example: if my surname happens to be Philips, the Philips company cannot legally prevent me from answering the phone with “Hello, this is Philips.” However, if I start selling medical equipment under the trademark Philips, then Philips can easily forbid me to use this name.
Trademarks and Services Overlap
According to BOIP, it’s clear that the trademarks and activities of Heijmans and Heijvast are too closely aligned. There is a risk of confusion, and therefore Heijvast will not get its trademark registration. And the ordeal may not be over yet. This ruling from BOIP only concerns the registration of the trademark, which is now prohibited. But that doesn’t necessarily mean that the use of the name is also forbidden. I also noticed that the Heijvast website is still live. It’s highly likely that Heijmans will now move on to the next phase: attempting to prohibit the use of the trademark name itself. This will likely begin with a strong cease and desist letter: take the website down and choose a new name, please! If Heijvast refuses, Heijmans can go to court and request to also ban the use of the name Heijvast. With BOIP’s ruling about the registration in hand, the chances of such a request succeeding are high
The Necessity of Trademark Research
This case once again highlights the importance of conducting legal research when introducing or registering a new trademark. If Heijvast had simply conducted a trademark search, the Heijmans trademark would undoubtedly have been identified as a serious risk, and the advice would have been: don’t do it! Now, however, this could turn into a costly issue for Heijvast.
Bas Kist
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