Mercis has a Benelux trademark registration for Miffy’s head for many products like mugs, lamps, furniture and clothing. With this registration, it was a piece of cake to stop the Bunnyjuice logo for clothing. The European trademark office EUIPO notes that the trademarks are very similar. Consumers will be confused if the Bunnyjuice logo is used on clothing. So it’s a trademark infringement.
Sex toys are more complex
However, for sex toys, it is a bit more complex. Mercis has, of course, never registered its Miffy brand for sex toys. Fortunately, trademark owners have options to protect their trademark against other types of products. But then you will have to demonstrate that your brand has a reputation, and oddly enough, that’s where things went wrong.
Although Mercis presented a large amount of evidence for Miffy trademark usage in these proceedings, according to EUIPO, it did not yet show that the trademark has a great reputation in the Benelux. And without this reputation you can’t act outside your category under trademark law. So Mercis has to put up with the sex toys (for now).
Sales figures and market share
But why doesn’t EUIPO accept that reputation? EUIPO also sees that the Miffy trademark is used for children’s clothing, books and cards. However, according to EUIPO, what is missing are things like concrete sales figures of Miffy products, information about the market share of the Miffy products and investments in the promotion of the Miffy trademark. Without it, EUIPO doesn’t want to assume a reputation.
It feels unjust that an American trader in ‘adult sexual stimulation aids’ may label their products with a trademark that is a copy of a children’s brand Miffy, world-famous in the Netherlands (and far beyond?). We can only hope that Mercis will finally be able to kill off fake Miffy with some extra reputation support in appeal.