Not distinctive in the Netherlands and Belgium
To obtain an EU trademark registration, a mark must be distinctive in all 27 EU countries. If it fails the test in just one country, there will be no registration. Of course, Spoorwegmuseum is a distinctive trademark to an Italian, since they have no idea what the word means. A perfectly good trademark, then. But for consumers whose language is Dutch — meaning consumers in the Netherlands and Dutch-speaking Belgium (Flanders) — the word Spoorwegmuseum simply describes exactly what it is. It is therefore not distinctive and cannot be registered as an EU trademark.
Acquired distinctiveness
But the museum had another argument up its sleeve. It claimed that Spoorwegmuseum had acquired distinctiveness as a trademark in the Netherlands and Belgium. Acquired distinctiveness occurs when a name that is not inherently distinctive nevertheless comes to be perceived as distinctive by consumers as a result of long-term use and advertising. In a sense, the word then loses its descriptive meaning. A good example of a trademark that has acquired distinctiveness is easyJet: once purely descriptive of an airline offering convenience, but through long-term use it has become strongly established and developed into a genuine brand.
Not the easyJet of museums
According to EUIPO, however, the Spoorwegmuseum is not the easyJet of museums. Despite the museum bombarding the European trademark office with evidence of visitor numbers, social media presence, brand surveys and media coverage, EUIPO still considered the evidence insufficient. According to EUIPO, this was true for the Netherlands, but even more so for Belgium. Even if one were to assume that Spoorwegmuseum had acquired distinctiveness in the Netherlands, the trademark would still fail in Belgium, EUIPO said. There, the name has certainly not acquired distinctiveness. An important lesson: when submitting evidence of acquired distinctiveness for a Dutch name, always bear in mind that you will also need to prove acquired distinctiveness in Flanders, the Dutch speaking-part of Belgium!
Clothing
The museum is not left entirely empty-handed, however. The trademark application also covers clothing, and for those goods the mark will receive protection. Well, that makes sense: for clothing, Spoorwegmuseum or Railway Museum is a very unusual, but distinctive, trademark. Is that a pair of G-Star jeans you’re wearing, or is it Spoorwegmuseum?
A branch in Malta
But putting all these legal intricacies aside for a moment: what prompted the Dutch Railway Museum Foundation to apply for EU trademark protection for this Dutch word in no fewer than eight (!) classes of goods and services in the first place? What exactly are they planning to do in the rest of Europe? Could there be plans to open a branch in Poland or Spain under the name Spoorwegmuseum? A satellite location in Malta?
Bas Kist
Banner image: Photo by Jochen van Wylick on Unsplash
Spoorwegmuseum image: Marion Golsteijn, CC BY-SA 3.0, via Wikimedia Commons
