In a judgment of 28 May 2013, the Brussels Court of Appeal quashed an earlier decision of the President of the Brussels Commercial Court (see, VBB on Belgian Business Law, Volume 2009, No 10, p. 10, available at www.vbb.com) allowing the use of the trade mark "DVV OsCar" by Dexia Insurance Belgium NV, now Belfius Insurance NV ("Belfius").

The case at hand pitted the Academy of Motion Picture Arts and Sciences (the "Academy"), proprietor of the trade mark "Oscar" and the organiser of the yearly Oscar Academy Awards in the film industry, against Belfius, proprietor of the later trade mark "DVV OsCar". The Academy claimed infringement of Articles 2.20.1 c) of the Benelux Convention on Intellectual Property of 25 February 2005 ("BCIP") and 9.1 c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (the "Trade Mark Regulation"). Article 9.1 c) of the Trade Mark Regulation provides the following:

"Any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."

Article 2.20.1 c) provides for a similar rule with respect to Benelux trade marks.

Belfius' trade mark "DVV OsCar" relates to a savings scheme for car insurance that rewards with a "DVV OsCar" members who have not caused a car accident for five years. Later, these "DVV OsCars" can be exchanged for discounts on the car insurance payments. The Brussels Court of Appeal held that Belfius infringed Articles 2.20.1 c) BCIP and Article 9.1 c) of the Trade Mark Regulation.

Belfius' and Academy's trade marks are identical or similar

According to the Court, Academy's trade mark "Oscar" and Belfius' trade mark "DVV OsCar" are similar. Neither the capital letter "C", nor the letters "DVV" in Belfius' trade mark can take away the similarity between the two trade marks. The Court noted that "DVV OsCars" is often promoted with the slogan "And the OsCar goes to...", a phrase traditionally used by the Academy. The fact that this phrase was used by a third party to promote "DVV OsCars" is irrelevant since the relevant audience will still make a connection between the two trade marks, even if it will not confuse them.

Belfius' trade mark is detrimental to the distinctive character of the Academy's trade mark

At first instance, the President of the Brussels Commercial Court had rejected the Academy's claim and held that Belfius did not infringe Academy's trade mark since it had not taken unfair advantage of the distinctive character or the reputation of the trade mark "Oscar". It was also held that Belfius had not engaged in any detrimental use of the trade mark.

In contrast, the Court of Appeal overturned this decision referring to the Interflora judgment of the Court of Justice of the European Union ("ECJ") of 22 September 2011. In Interflora, the ECJ held that "detriment is caused to the distinctive character of a trade mark with a reputation when the use of a sign identical with or similar to that mark reduces the ability of the mark to distinguish the goods or services of its proprietor from those which have a different origin" (see, VBB on Belgian Business Law, Volume 2011, No. 9, available at www.vbb.com).

According to the Court of Appeal, the Academy must be entitled to prevent all use of a similar sign which reduces the distinctiveness of its trade mark "Oscar", even if the specific use does not result in the total loss of the trade mark's distinctive character: "Given the reputation of the Academy's Oscar trade marks, the risk would exist that the trademarks become a generic term in the eyes of a reasonably well-informed and reasonably observant consumer".

Belfius used the Oscar sign without due cause

Finally, the Court of Appeal held that Belfius had not used its sign "DVV OsCars" with due cause. Hence, the Court considered that when comparing the interest of the Academy in preserving the origin of its trade mark and the interest of Belfius in using its trade marks, the balance was clearly in favour of the Academy.

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