NEW TEL Benelux registration cancelled by Belgian court

In Newtel Essence BV v Nextel NV, the Antwerp Court of Appeal has dismissed the plaintiff's infringement claim and has upheld a counterclaim for cancellation of the plaintiff's Benelux registered NEW TEL mark (Case 2002/AR/2720).

Dutch company Newtel Essence is the proprietor of the Benelux word and device mark NEW TEL and logo, and the figurative mark NEWTEL ESSENCE for, among others things, telecommunications equipment, computer software and hardware. It sought injunctive relief against two Belgian companies Nextel and Newtel (the defendants), for the allegedly infringing use by the latter of the name Newtel as a company name, trade name and domain name in relation to telecommunications services. The defendants filed a counterclaim seeking cancellation of the NEW TEL mark due to a lack of distinctive character.

The Antwerp Court of Appeal first examined the issue of jurisdiction. Newtel Essence had contended that the court did not have jurisdiction to issue a ruling on the validity of a trademark where the initial action was, as here, a claim for injunctive relief under the Belgian Fair Trade Practices Act. The court rejected this argument and declared that it had jurisdiction to hear the defendants' counterclaim.

It next considered the case on its merits. Referring to the principles set out by the European Court of Justice in BABY-DRY, the Antwerp Court of Appeal held that the word 'New', although a foreign language word, would be seen by the relevant class of consumers as an indication of the quality of the products and services covered by New Tel Essence's mark. In addition, the word 'Tel' was universally used as an abbreviation for telephone. Therefore, both elements making up the mark lacked distinctive character.

The court stated that once combined, the two elements constituted a common expression of the type or quality of goods and services covered by the mark. It noted that a mark consisting of a word made up of elements that separately lack distinctiveness does not necessarily become distinctive as a result of the combination of those elements. In the case at hand, the combination was said to be banal and the figurative elements were not sufficiently creative or otherwise distinctive to alter that finding. Consequently, the court upheld the defendants' counterclaim and cancelled the NEW TEL mark.

Philippe de Jong, Altius, Brussels