June 2017. Artikel 1, a Dutch political party, has been told to change its name within a month. The District Court in Amsterdam has ruled that it is infringing the trademark rights of the Anti-Discrimination Expertise Centre ADEC to the same name; unjustifiably, in Chiever’s opinion.
Unjustified
We think the grounds on which Artikel 1 lost the case were unjustified, since ADEC should never have been granted protection for Artikel 1 (Article 1) as a trademark for services in relation to anti-discrimination in the first place.
As part of the process for registering a trademark, the Benelux Office for Intellectual Property (BOIP) assesses the distinctiveness of the mark. BOIP specialists consider whether the trademark concerned has the capacity to distinguish a company’s products or services. In law, if a trademark consists only of a name that describes the characteristic of the product or service, it must be refused.
Artikel 1 not suitable as a trademark
The name Artikel 1 as used by ADEC unmistakably refers to Article 1 of the Dutch constitution, which prohibits discrimination. So the trademark ‘Artikel 1’ is a name that describes a characteristic of the services, i.e. activities aimed at opposing discrimination. This makes it entirely descriptive or referential, and therefore not suitable for registration as a trademark.
Slipped through the net
In our view, BOIP should not have accepted the application for registration of the the trademark ‘Artikel 1’ of ADEC. Nor is this consistent with the very precise and strict assessment criteria normally applied by BOIP. Nevertheless, to err is human, and it appears that on this occasion the application slipped through the net. The Amsterdam Court of course could also itself have queried the validity of the registration.
Go to appeal?
The Political party now has two choices before her: to accept the ruling or to go to appeal. We’d advise the latter.
