POPSTARS marks held to be invalid

The District Court of The Hague has issued an important decision in the dispute over the name of the television programme The Next Popstar. 

Australian company Screentime licenses the production and broadcasting of the talent show Popstars, and is the owner of the Benelux word marks POPSTARS and POPSTARS - THE RIVALS. In 2012 SBS indicated that it would start broadcasting a music talent show under the name 'The Next Popstar'. Both programmes deal with the scouting of new music talents. Screentime claimed rights to the name Popstars and objected to the use of words 'the next popstar' for the new television programme.

In summary proceedings, Screentime obtained an injunction against the use of 'the next popstar'. The presiding judge held that Screentime’s trademark registrations were descriptive of the services in question (ie, the production of television and other audio-visual entertainment programmes). However, the court did grant Screentime trademark protection by holding that POPSTARS was a well-known trademark in the Netherlands within the meaning of Article 6bis of the Paris Convention. The court found that POPSTARS had acquired distinctiveness through extensive use in one of the Benelux countries (ie, the Netherlands). This is an interesting finding, which seemed to suggest that registration would no longer be a requirement for relatively well-known trademarks, as actual use in one of the Benelux countries would provide trademark protection.

However, in the full court proceedings, the District Court of The Hague denied all claims. In addition, the court cancelled Screentime’s registrations for its POPSTARS marks on the ground that they were descriptive.

Further, the district court decided that Screentime had not proven that POPSTARS was a generally well-known mark within the meaning of Article 6bis. The court held that the question of whether a trademark is generally well-known must be judged ex nunc. According to the court, the evidence submitted showed that the use was not sufficiently longstanding and intensive to prove acquired distinctiveness through use in 2013.

Regarding the degree of notoriety required, the court ruled that, although the threshold for protection for generally well-known trademarks was lowered following the entry into force of the Agreement on Trade-Related Aspects of Intellectual Property Rights (Article 16, Paragraph 2) and comes close to the threshold for protection of well-known trademarks within the meaning of Article 2.20(1)(c) of the Benelux Convention on Intellectual Property/Article 9(1)(c) of the Community Trademark Regulation (207/2009), this threshold cannot be considered to be the same as that for the protection of well-known 'Section (c)' trademarks.

This last finding is of great importance for trademark law, since, for Article 6bis-type protection, no registration is required. The court held that only very well-known trademarks can obtain such protection, and that the POPSTARS marks did not fit that definition.

Naomi Ketelaar, Klos Morel Vos & Schaap, Amsterdam 

Klos Morel Vos & Schaap represented Talpa and SBS in this matter