The difference between being right and being proved right in trademark law
The key to success was ultimately found in the client’s perseverance and the intensive collaboration between the client and the advisor. A dual interview with Marcel Bakker, director of WIJ Special Media, and Yvonne Noorlander, trademark attorney at NLO Shieldmark.
WIJ was first registered as a trademark in 1974. What was it that led you to increase the level of protection two years ago?
Bakker: ‘We have two major trademarks: the ‘Blije Doos’ pregnancy box and WIJ. WIJ is a strong trademark that is extremely well-known. It’s a very good trademark for us because we can include many different editorial and commercial activities under that umbrella. The WIJ magazine, wij.nl website, WIJ à la Mama blog platform, photo service, discount club, online children’s bookshop and the holiday division, each of which has their own sub-brand, all benefit from the recognisability of the main brand, ‘WIJ’. The ‘WIJ’ brand is used for communications for all of our consumer concepts apart from the ‘Blije Doos’ pregnancy box.’
Noorlander: ‘When companies continue to grow and launch new products and services, it’s up to us as advisors to examine the intellectual property portfolio at certain times to check whether they still provide adequate protection.’
And you concluded that this was no longer the case?
Noorlander: ‘There was already a strong WIJ trademark for printed matter, which had been registered for a very long time. But as the activities of WIJ Special Media had expanded into many other areas over the years, the level of protection could be supplemented. Trademark law is divided into 45 classes of goods and services; classes 1 to 34 consist of goods, while the other classes relate to services. At first, the WIJ trademark was only registered in class 16, which mostly concerns printed matter. There are separate classes for advertising and market services of significant importance to WIJ, for printing photos, providing advice and information on holidays, and so on.’
Bakker: ‘Back then, we were also working on the launch of our WIJ à la Mama blog and vlog platform, so we applied to register the trademark in that category as well. It’s particularly important that we protect our trademark properly because ‘WIJ’ is such a common Dutch word. Therefore, it can be easily copied and initiatives with similar names are frequently launched on the market. This is often done by parties acting in relative ignorance, and which may have failed to perform any research at all to determine the availability of the mark name. We come across such parties from time to time and you need to be able to defend yourself in such situations.’
Noorlander: ‘When a trademark has been lifted from the dictionary as it were, we often find that someone else will also start using it. When it comes to these types of trademarks, it is especially important to ensure they are well-protected and to maintain as much exclusivity as possible.’
That’s probably harder to achieve from a legal perspective.
Noorlander: ‘Invented or fanciful trademarks are more likely to be available and therefore to be accepted. By contrast, ‘WIJ’ is such a common word that I informed the client that we should expect some obstacles when registering it as a trademark.’
The ‘WIJ’ trademark had enjoyed protection for a long time, so why was it uncertain that this protection could be renewed or increased?
Noorlander: ‘Just because a trademark was registered for ‘WIJ’ in class 16 back in the 1970s does not mean that you can automatically register the same name in other classes in 2016. The authority (the Benelux Office for Intellectual Property (BOIP), ed.) always checks on absolute grounds for registering the trademark: it should not be descriptive and it must be of a sufficiently distinctive character to serve as a trademark.’
How do you prove that a word such as WIJ has acquired distinctiveness and is not descriptive?
Noorlander: ‘Unfortunately, we were unable to do this at first. In response to our trademark application, we received a letter from the BOIP stating that they found it “to lack distinctiveness/be descriptive”. This was the only explanation given, since the authority does not provide detailed reasons for rejecting a trademark application. That can make it difficult for us as trademark attorneys, and obviously for clients too, to challenge such decisions. It forces you to pull out all the stops, and this results in a very special dynamic between the client and trademark attorney.’
How did you respond as a company when you received a one-line letter like that from the authority?
Bakker: ‘It’s clearly not the kind of thing we encounter on a daily basis. It’s hard for us to understand the reasoning followed by the trademark authority and determine what they’re looking for. How exactly do we need to support our case and which information do we need to supply? At such times, it’s essential that you’re able to work closely with your advisors.’
You could have also taken the view that you would put a great deal of time and energy into the application, you knew there was a chance it would be rejected, there were plenty of other things going on at the company that deserved your attention, and so it would be best to drop the application process.
Bakker: ‘We are obviously a sales organisation too: for us, the game doesn’t get under way until we encounter the first problems. Having already decided to go down this road, we weren’t going to give up quickly. And, based on our meetings with Yvonne, we knew that we had good grounds for pushing on and that our trademark would eventually be registered.’
Noorlander: ‘We adopted a two-pronged approach from the start. At first, we attempted to demonstrate that the trademark is not descriptive and that it is distinctive. For example, I had found a couple of trademark registrations for ‘IK’ (‘I’) and ‘JIJ’ (‘You’) that had been accepted around the same period, and ‘WE’ is a very well-known brand of clothing in the Netherlands. Unfortunately, the authority does not always take such arguments seriously, and as it requires that every case be judged on its own merits. You really have nothing to go by. There is, however, another ground on which protection can be obtained, which is acquired distinctiveness. In that case, the word mark must have become so well-known that consumers no longer perceive its literal meaning and instead really view it as a trademark.’
So acquired distinctiveness offers trademark attorneys a way forward?
Noorlander: ‘Yes, attorneys often use this kind of construction, in which they present one primary argument first, after which they present alternatives. In the case of WIJ, proving acquired distinctiveness meant that we had to try to prove that WIJ was not to be interpreted as a personal pronoun, nor was it a descriptive term for ‘mum, dad and baby’ but that it really was to be construed as a separate trademark. Take the BOOKING.COM trademark, for example. That’s obviously an descriptive name for booking a hotel accommodation, and it would probably have been difficult at first to register a trademark for that name. However, in the course of time, the BOOKING.COM mark would have taken on different overtones among consumers. It now stands for a concept and image, and the word mark has acquired a new meaning of its own. In the case of WIJ, I thought acquired distinctiveness gave us our best chance.’
How can you prove that the WIJ trademark has already acquired distinctiveness?
Bakker: ‘WIJ is a very well-known trademark in our target group. Between 80 and 85 percent of all expectant mothers in the Netherlands request a ‘Blije Doos’ pregnancy box. The consumer shares her data with us, including her due date, and based on this we send her the box as well as the WIJ magazine once every two months. As a result, we have a huge market share and are clearly the biggest title in the young parents market. The WIJ trademark has been operating in the market for over 40 years. In a further effort to substantiate our brand recognition, we also referred to the number of page views on our websites, the number of likes on Facebook, Google AdWords campaigns, and our presence at the Negenmaandenbeurs exhibition for expectant mothers and young families, which attracts 50,000 visitors and where we have a large booth.’
Noorlander: ‘This information is highly relevant for the BOIP. What you need to prove for acquired distinctiveness through use are matters such as market share, the intensity and geographic distribution of the use of the trademark, how long the trademark has been used, the scale of the investments, and the percentage of interested parties that identify goods and services with the business. This is all legalese, of course, but I have the task of providing tangible examples of documentary evidence for that – invoices, market research and so on.’
You would think that a market share of over 80% would be proof enough.
Noorlander: ‘Perhaps, but to my mind the extraordinary thing about WIJ Special Media was that they put so much energy into supplying evidence. In my experience, this is often where things go wrong. I always try to make it clear to clients that being right and being proved right are two different things. The client may think that they are in the right and that the trademark simply needs to be registered, but that doesn’t relieve them of the obligation to supply proof. If you don’t do so in situations such as this, your trademark application will end up being rejected.’
Bakker: ‘Anja Schuttert, our deputy director, put a great deal of energy into this. She isn’t someone who lets go quickly either. In the end, we supplied documents from blue-chip multinationals that advertise with us and invoices from the postal service that distributes WIJ magazine. These documents include the WIJ trademark and a date and circulation figures, all of which help to demonstrate how long, and how intensely, the trademark has been used.’
And did this piece of evidence prove the trademark had acquired distinctiveness?
Noorlander: ‘Not quite! Matters were complicated further by the fact that the Netherlands chose to organise trademarks at Benelux level, whereas most other countries have a national system of trademark law. Trademark protection is not divisible: the registration is either accepted or rejected for the Benelux as a whole. In Luxembourg and French-speaking parts of Belgium, this was not a problem as the Dutch word ‘WIJ’ is not descriptive in these French speaking countries and so it makes for an excellent brand name. In the case of the Netherlands and Dutch speaking Flanders, however, we had to prove acquired distinctiveness. We had plenty of proof of this for the Netherlands, but the authority informed us that we had insufficient proof for Flanders.’
How important is the Belgian market to WIJ Special Media?
Bakker: ‘It’s not important. We publish a special edition for newsstand sales, but this generates only a small fraction of our total revenue. So, it was very strange to think that the trademark registration was in danger of failing because we couldn’t prove it had acquired distinctiveness in a market that isn’t important to us. These are separate markets anyway – I can’t think of a single newspaper or publication that’s big in both the Netherlands and Flanders.’
Noorlander: ‘The meetings I had about this with Anja Schuttert gave me an idea. She told me how difficult it is to publish Dutch titles in Flanders without making changes. Although we speak the same language, there are many subtle but significant differences. For example, the words used for ‘midwife’ and ‘maternity leave’ in the Netherlands are different from those used in Flanders. Moreover, there are significant differences in the areas of politics, economics and healthcare: the healthcare systems are different, maternity leave is arranged in a different way and so on. You have to prove acquired distinctiveness for the relevant market. We were able to demonstrate that the Dutch and Flemish media markets are separate markets and that in this case only the Dutch market is relevant. The client and trademark attorney need to work very closely together in order to translate such specific knowledge of the market into well-founded legal arguments. In the end, this proved successful and we were able to extend and update the trademark registration for WIJ.’
Looking back, how do you feel the process went as a whole?
Noorlander: ‘If they hadn’t persevered, the trademark registered for WIJ would not have been as extensive and anyone else could have used it. Clearly, it was extremely important to WIJ Special Media, as a major professional player, that it secured the right trademark registration. That is true for many companies, but the reality is that not every client is equally aware of this; it requires money, of course, and not every client has enough time and money to keep fighting. That’s what I thought was so special about this particular case: we worked together very closely, we decided jointly on the strategy we wanted to pursue, and then WIJ also went to the trouble of collecting a huge amount of proof in support of that strategy.’
Bakker: ‘These processes take a long time and demand a lot of energy. I can imagine many companies might give up, admit defeat and shift their focus to other priorities. We felt it was important to keep going even when things got tough, as that’s the only way to achieve anything. That said, in a certain sense this entire process was just the groundwork. We now have a good defence, but even if you’ve documented everything you still need to stay vigilant in order to protect your trademark properly. Should anything affecting our trademark happen in the market now, we’re in a much stronger position and we have something to fall back on. When it comes to claiming a trademark such as WIJ as your property that no-one else has the right to use, you really go empty-handed unless you’ve registered the trademark.’