Bat Beverage may use bat sign despite Bacardi's earlier bat logo

Netherlands

In Bacardi & Company Ltd v Bat Beverage GmbH, the District Court of The Hague has dismissed Bacardi & Company Ltd's application for a summary injunction enjoining Bat Beverage GmbH from using a logo featuring a bat (Case KG05/245, May 18 2005).

In January 2005 Bat Beverage launched on the Dutch market an energy drink the can of which features a bat logo. Bat Beverage filed applications to register its trademark, made up of the bat logo and the words 'mad bat' or 'power bat', in several countries. Bacardi opposed the applications on the grounds that a likelihood of confusion existed with its bat logo. The opposition was successful in the United Kingdom but was dismissed in France, Germany and Switzerland.

In the Netherlands, Bacardi initiated summary injunction proceedings before the District Court of The Hague on the basis of its bat logo, registered as a Community and Benelux trademark for non-alcoholic and alcoholic drinks. Bacardi sought to enjoin Bat Beverage from using its bat sign. Bacardi relied primarily on Article 9(1)(b) of the Community Trademark Regulation and Article 13A(1)(b) of the Uniform Benelux Law on Trademarks, which provides that the proprietor of a mark may, by virtue of its exclusive right, prohibit any unauthorized third party from using a sign when that sign is (i) identical or similar to the trademark, and (ii) used in the course of trade for the same or similar goods. Alternatively, Bacardi relied on Article 9(1)(c) of the regulation and Article 13A(1)(c) of the law, claiming that the use of the Bat Beverage sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Bacardi mark.

The court dismissed the application. It held that the representation of a bat will, in principle, not lead to a particularly distinctive character as the bat is a well-known animal that is also used to distinguish goods other than drinks (eg, the Batman stories and films).

According to the court, Bacardi did not sufficiently substantiate its claim that the logo had become well known through continued use. Of significance was the fact that Bacardi practically always uses its logo in combination with the prominent word mark BACARDI. The court noted that BACARDI is a very well-known mark that has a particularly distinctive character, but this does not necessarily mean that a logo used in combination with it (i) is also well known independently of it, and (ii) would derive major distinguishing characteristics from it. A consumer survey that Bacardi submitted as evidence of the logo's distinctiveness did not convince the court that the logo in itself is well known.

Bacardi also pointed out that the Bat Beverage sign is in identical colours to the Bacardi logo as presented to the public. The court, however, noted that Bacardi had only registered the logo in black and white.

Further, the court held that even though there are some similarities between the logo and the sign, there are also obvious differences:

  • the lay-out of the wings and the inclination of the bat's head is different in each sign;

     
  • the Bat Beverage sign is oval while the Bacardi logo is round; and

     
  • the Bat Beverage sign features a light bat against a dark background while the Bacardi logo consists of a dark bat against a light background.

Finally, the court acknowledged that Bat Beverage uses its logo solely in combination with its prominent word mark.

All this led the court to conclude that a likelihood of confusion or association could not be established in this instance. Accordingly, it dismissed Bacardi's primary claim. The court also dismissed Bacardi's alternative claim of a likelihood of dilution on the grounds that a logo needs to be well known for a court to allow such a claim. Here, the court had already found that this was not the case.

In 2008 Bacardi's appeal against this decision was upheld.

Elske Henny, Allen & Overy LLP, Amsterdam

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