Penthouse brothel name does not infringe PENTHOUSE magazine mark

Netherlands

The President of the Haarlem District Court has ruled that the use of the trade name Penthouse for services typically rendered in brothels does not infringe the trademark PENTHOUSE for adult entertainment (Case 117263/KG ZA 05-532, November 22 2005).

General Media is the owner of the Benelux trademark PENTHOUSE for magazines and adult entertainment. The mark was first registered in 1973. Tamarinde has used the name Penthouse for a private men's club in Haarlem since 1976. General Media first noticed Tamarinde's use of the Penthouse name in June 2005 and subsequently sued Tamarinde for trademark infringement.

The court first considered whether erotic magazines are similar to brothel services. Although some overlap could not be denied, the court found that there is quite a difference between buying an erotic magazine and going to a brothel.

The court then considered whether Tamarinde was diluting the PENTHOUSE mark or passing its club off as being affiliated to the magazine. In the court's mind PENTHOUSE is a well-known trademark that can rely on the wider scope of protection against dilution provided under Article 13A1(c) of the Uniform Benelux Law on Trademarks and Article 9(2) of the Community Trademark Regulation. However, in view of the fact that Tamarinde's use of the name Penthouse for its private club had remained unnoticed by General Media for 29 years, the court held that General Media had not sufficiently substantiated the claim that either the repute or the distinctiveness of the PENTHOUSE mark was damaged.

Accordingly, the court dismissed General Media's claim.

Paul Reeskamp, Allen & Overy LLP, Amsterdam

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