Benelux registration of MARIE CLAIRE cancelled

In Marie Claire Album SA v Ipko-Amcor BV (Case 00/2268), the District Court of The Hague has cancelled the defendant's Benelux registration of the trademark MARIE CLAIRE on the grounds that it had been registered in bad faith and was confusingly similar to the plaintiff's famous international marks.

Marie Claire Album (MCA) publishes the fashion magazine Marie Claire and owns the international trademarks MARIE*CLAIRE for magazines, and MARIE-CLAIRE for magazines and clothing. It brought an application for a permanent injunction preventing Ipko-Amcor from using the Benelux registered mark MARIE CLAIRE. Ipko-Amcor, a Dutch company, registered the mark in 1992 and had been using it since 2001 to market socks, stockings and underwear.

MCA argued that its trademarks were famous in Benelux at the time Ipko-Amcor registered its mark. Therefore, pursuant to Article 6bis of the Paris Convention for the Protection of Industrial Property, Ipko-Amcor had registered the mark in bad faith. MCA further argued that, since Marie Claire is a fashion magazine and MCA also sells various fashion accessories, it was likely that the public confused Ipko-Amcor's MARIE CLAIRE marked products with MCA's products.

The court agreed with MCA and ordered the cancellation of Ipko-Amcor's mark. It noted that, by invoking Article 6bis of the convention, MCA was not bound to a limitation period for claiming cancellation of the mark (as would have been the case under the Benelux Trademark Act).

Steffen Hagen, Allen & Overy, Amsterdam