On 9 October 2013, the Court of The Hague in The Netherlands (the "Court"), dismissed the claims of Hormel, the proprietor of an earlier Community and Benelux trademark "SPAM" for canned meat (the "Hormel trade mark"), to declare void Dukka's international and Benelux trade marks "Living on the edge/Spam/Energy drink" and Dukka's Benelux trade mark "SPAM" for drinks (the "Dukka trade marks"). Hormel is a seller of canned meat in the UK while energy drinks bearing the Dukka trade marks are sold in various countries in Europe excluding the UK.
Hormel based its claims against the Dukka trade marks on two main grounds: (i) the protection of an earlier trade mark against an identical or similar sign used for identical or similar goods or services where a likelihood of confusion exists on the part of the public pursuant to Article 9 (1) (b) of Council Regulation 2007/2009/EC of 26 February 2009 on the Community Trade Mark (the "Regulation") and Article 2.3 (b) of the Benelux Convention on Intellectual Property (the "BCIP"); and (ii) the protection of an earlier well known trade mark against an identical or similar sign used for non-similar goods or services where the sign would take unfair advantage of the reputation or is detrimental to the distinctive character of the trade mark pursuant to Article 9 (1) (c) of the Regulation and Article 2.3 (c) of the BCIP.
The Court dismissed the first claim holding that the goods covered respectively by Hormel's trade marks and the Dukka trade marks were not identical or similar. Although both products are consumer products, the Court found the products not to be similar since one product belongs to the food category while the other product is a drink. Moreover, the Court considered that energy products and canned meat are not interchangeable, competing or complementary products.
The Court also dismissed Hormel's second claim (i.e., infringement of a well known trade mark). Although the Court considered that it was established that Hormel's trade mark is known to the British public, Hormel failed to prove that its trade mark has an equal reputation in the Community as a whole or in Member States where the Dukka trade marks are used. Hormel substantiated its trade mark's reputation outside of the UK with reference to a Monty Python sketch of 1970 in which the sign "spam" was used repeatedly. However, the Court reasoned that "although it cannot be excluded that a trademark becomes known only through its publicity, the [...] sketch [...] is insufficient to assume the reputation of Hormel's trade mark [outside the UK]". According to the Court, the term "spam" in the sketch did not specifically refer to Hormel's product.
Hormel was also unsuccessful in proving the distinctive character of its trade mark arguing that "spam" is actually a contraction of the words "spiced" and "ham". The Court instead followed the reasoning of the defendant arguing that the word "spam" is now mostly used for unwanted e-mails.
The Court thus refused the invalidity claim considering that: (i) the Dukka trade marks were only used in Member States where Hormel's trade mark is not well known and that the defendant had no plans to extend its business to the UK; (ii) the Hormel trade marks and the Dukka trade marks were used for goods which are not similar; and (iii) that Dukka's Community trade mark was not completely identical to Hormel's trade mark.
Finally, the Court also dismissed Hormel's claim that Dukka's Benelux trade mark application was in bad faith pursuant to Article 2.4 (f) of the BCIP. The Court hereby referred to the Goldhase case in which the ECJ had held that "the fact that the applicant knows or must know that a third party has long been using, [...] an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith".
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