In the case of Dairy Partners v. Doc Dairy Partners, the HR (Dutch Supreme Court) issued a groundbreaking ruling on February 19, 2021, regarding the scope of protection of “descriptive” tradenames. The conclusion was that for infringement of a descriptive tradename only the criterion of likelihood of confusion as set out in article 5 of the Tradenames Act is relevant. Additional circumstances are not required. Unlike trademarks, a tradename does not need to have “distinctive character”.
This was the case in earlier case law of the HR regarding domain names. In the 2015 Artiestenverloning (Artist’s Choice) judgment on domain names, the Supreme Court ruled that it must be possible for anyone to use a purely descriptive indication, even if this leads to confusion. The use is only unlawful in case of additional circumstances. The Court of Appeal of The Hague adopted this consideration with regard to purely descriptive trade names.
The HR now states that the additional circumstances are not required for descriptive trade names and that it is only necessary to examine whether there is a likelihood of confusion within the meaning of article 5 of the Tradenames Act.
However, the descriptive character of the tradename and its smaller scope of protection can also play a role in art. 5 Hnw. When determining whether confusion is likely, all circumstances of the case must be taken into account. The more descriptive a tradename is, the smaller the scope of protection.
However, when it comes to domain names – not used as a tradename – the doctrine of wrongful act (Article 6:162 of the Dutch Civil Code) plays a role. The Supreme Court indicated that additional circumstances are required in case of domain names.
