September 2017. The Hoog Catharijne shopping mall in Utrecht has successfully overturned commercial property company Rodamco’s European trademark registration of the logo ‘Mall of the Netherlands’. According to the Cancellation Division of the European Trademark Office EUIPO, Rodamco failed to use the trademark and its rights have therefore lapsed.
5-YEAR RULE FOR NON-USE
In an opposition filed with the EUIPO, the Hoog Catharijne mall showed that the device mark Mall of the Netherlands, which Rodamco had registered in 2008, had not been used for five years. Trademark law states that registered rights can lapse after five years of non-use.
NOT TO BLAME
Rodamco however claimed it wasn’t to blame for its failure to use the trademark, which was intended as the new name for a shopping centre in Amstelveen. Because negotiations with Amstelveen city council had taken longer than expected, Rodamco had been unable to start building Mall of the Netherlands. The company therefore argued its hands were tied.
The EUIPO disagreed, ruling that such ‘bureaucratic obstacles’ were not an adequate justification for non-use. We think that’s correct, given that the rollercoaster ride of negotiations with municipalities is a normal part of the commercial risks borne by market players.
TO BE CONTINUED (FOR SURE)
It remains to be seen what the next step will be in the battle royal between Hoog Catharijne and Rodamco. On 7 June 2016, Rodamco had rechristened its Leidsenhage shopping centre ‘Mall of the Netherlands’ (with a different logo, for which it’s applied for trademark registrations). On 4 November of the same year, Hoog Catharijne applied to the Chamber of Commerce to have its name changed to Hoog Catharijne Mall of the Netherlands. To be continued for sure!