OutletExpert infringes upon Expert trademarks

Brand awareness surveys, turnover figures and market reports. Do they really matter in proceedings concerning trademark infringement and unlawful use of a trade name? A recent judgment of the District Court of The Hague shows the added value of a well-designed market survey.

The international electronics chain Expert initiated proceedings against a retailer trading in electronics under the name "OutletExpert". The retailer claimed that the name “OutletExpert” merely indicates that the store specialises in "outlet products". The court rules otherwise. On the basis of the brand awareness surveys, turnover figures and market reports submitted by Expert, it is clear that the Expert trademarks are highly distinctive. Partly because of this, OutletExpert infringes upon the Expert trademarks. Due to the reputation of the Expert trademarks, the public could perceive the name "OutletExpert" as "Outlet of Expert". Hence, there is a likelihood of confusion.

In addition, the District Court concludes that OutletExpert infringes upon Expert’s trade name. Again, the evidence on the reputation of the trade name "Expert" in the Netherlands is highly relevant. As a consequence of the use of the name “OutletExpert”, there is a serious risk that the public will think that OutletExpert is affiliated with Expert, or that it is in any other way connected to Expert. OutletExpert must now switch to a new name.

Daniël Haije and Bram Duivenvoorde represented Expert in this case.