The descriptive trade name continues to cause confusion

At the beginning of this year, in the DOC/Dairy Partners judgment, the Supreme Court finally provided clarity with regard to the descriptive trade name: in such a case, additional circumstances are required for an injunction:

"The method of assessing whether there is a likelihood of confusion (…) sufficiently ensures that indications which are descriptive of the nature of an undertaking or of the goods or services it supplies can be freely used by anyone. Therefore, as far as descriptive trade names without distinctive character are concerned, there is insufficient reason to require additional circumstances".

The general need for companies to be able to use and continue to use descriptive trade names, therefore plays an important role in assessing the question of whether a likelihood of confusion exists. After all, according to the Supreme Court, the public has become accustomed to the common use of descriptive trade names by companies.

In proceedings between teamleaders.nu and teamleaders.nl the Court in preliminary relief proceedings came to a special application of the 'additional circumstances'. Factors such as the danger of emails being sent to the wrong company, visual, auditory and conceptual similarity all play an important role in creating a likelihood of confusion. The attitude of teamleaders.nu (registering domain names after a summons) also seems to be of importance.

In this matter, the judge seems to completely ignore the assumption of the Supreme Court - the public has become accustomed to descriptive names - and concludes that there is actual confusion and therefore a prohibition is appropriate. This proves once again that the descriptive trade name continues to cause confusion.

Jeroen van Kampen, student intern