[Guest post] Dutch Supreme Court: when due cause has already been established, no further assessment of (dis)honest practices is required

Paying tribute may be flattering to some, but in trade mark law it is rarely appreciated. Despite their light-heartedness on screen, the creators of the comical Dutch TV show ‘Jiskefet’ were displeased when they found their name (and trade mark) on an book covering the history of the show.

In a recent decision, the Dutch Supreme Court gave a principal ruling on the concept of ‘due cause’, confirming once more that trade mark law is no laughing matter.

The Jiskefet TV show is a satirical program which ran in the 1990s and early 2000s and was very popular in its day. The name ‘Jiskefet’ is also registered as a Benelux word mark, for inter alia services in Class 35 and 41 of the Nice Classification.

In 2021, defendant and publisher Noblesse published the book ‘Jiskefet Encyclopaedia’: 

The book serves as a detailed omnibus of the TV show. Unhappy with the prominent appearance of the word ‘Jiskefet’ on the cover of the book, claimant Jiskefet B.V. (the proprietor of the mark) initiated infringement proceedings.

At first instance the district court of Noord-Holland granted the infringement claim to the extent that the book could only be sold with a sticker on the cover which made clear that it was not published or authorised by Jiskefet.

On appeal, the appeal court was faced with two questions:

• Firstly, did the use of the term ‘Jiskefet’ as a title constitute ‘use to distinguish between goods and services’?
• Secondly, if that were not the case, did the use qualify as use ‘for other purposes’ to which the proprietor can object? Regarding the latter, it is noted that under Benelux trade mark law as a result of the implementation of article 10(6) of the Trade Mark Directive (TMD) a proprietor can also object to use of the mark for other purposes, if such use takes, without there being due cause, unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The court answered the first question in the negative. It ruled that the use of a book title was done to merely denote the book as such and also formed an integral part thereof. Such use could not qualify as use to distinguish the goods and services of the publisher.

On the second question, the court observed that Jiskefet had not disputed that, as a part of the fundamental right to information, Noblesse was at liberty to publish a book on the TV show. Within the context of that right, the court held that the name ‘Jiskefet’ was an obvious choice for a book completely dedicated to the Jiskefet TV show and that the display, although prominent, was done in a factual manner.

Consequently, the appeal court concluded that exercising the right of information via an obvious title constituted ‘due cause’ in the sense of article 10(6) TMD and quashed the decision at first instance.

Before the Supreme Court, Jiskefet argued that use of a trade mark in a title is a form of identifying a good withing the meaning of article 14(1)(c) and 14(2) TMD. According to these provisions, a trade mark proprietor cannot prohibit the use of a trade mark for identifying or referring to goods, when such use is necessary to indicate the indented purpose and if done in accordance with honest practices.

Jiskefet implied that the latter requirement had not been fulfilled. It alleged that the prominent depiction of the name ‘Jiskefet’ would give the false impression that the book originated from Jiskefet or was associated therewith.

The Dutch Supreme Court rejected the argument. It found that articles 14(1)(C) and 14(2) do not expand the rights of the proprietor, but rather limit them. This is also evidenced by the title of article 14 of TMD, which is called ‘limitation of the effects of a trade mark’.

As a result, once it has been confirmed that there is due cause for using a trade mark, a proprietor cannot rely on articles 14(1)(C) and 14(2) to its advantage. Put differently, the existence of due cause means that there is no trade mark infringement to begin with, and therefore an assessment of ‘use in accordance with honest practices’ is not required.

Are due cause and honest practices two different concepts or the same one? Conceptually, it is difficult to imagine there being use that is dishonest and genuine at the same time. Yet conversely, in the opinion of these KatFriends, the case at hand demonstrates that it is conceivable that there is due cause to use a mark, but the way it takes place is contrary to honest practices.

Using a mark as a book title may fall within the scope of protection granted by freedom of expression and freedom of information, but there are many ways to depict the mark when exercising these rights. One could imagine the cover of a book criticizing excessive consumerism, where major brands like McDonalds, Coca Cola and the like are prominently depicted. Is such use automatically protected by an underlying due cause?

It may have been more prudent of the Dutch Supreme Court to await the decision by the CJEU in the IKEA case. Also here, there is apparent due cause to use the mark (freedom of political expression), but one can question if a trade mark proprietor should, against its will, be associated with a political statement as a result of the prominent and recognisable depiction of its marks.

If anything, these cases show that the concept of limitations to trade mark law is still rather abstract and further clarifications from the CJEU are indeed necessary.