Recruitment company’s logo held to infringe competitor’s trademark
On February 28 2014 the Borgarting Court of Appeal rendered its judgment in the case between Dutch company Randstad Holding NV and Norwegian company Top Temp Holding AS. Both Randstad and Top Temp are active within the recruitment business; Randstad mainly focuses on permanent recruitment, while Top Temp is more dedicated to interim staffing.
The case concerned Top Temp's use of a logo in alleged violation of Randstad's trademark rights.
Randstad's trademark (IR 06441974)
Top Temp's logo
When evaluating whether the services covered by Randstad's trademark and Top Temp's logo were similar, the Borgarting Court of Appeal emphasised that the similarity based on Class 35 of the Nice Classification had the most relevance. This class includes, among other things, "personnel recruitment", "temporary staff deployment", "advisory services in the field of staffing" and "selection of personnel".
Randstad and Top Temp both use their trademarks for the promotion of recruitment services. The Court of Appeal concluded that there was a high degree of similarity between the services provided by the parties.
The main question was thus whether the marks were confusingly similar. The actual colour used by Randstad for its mark was not taken into account, since the trademark registration covers all colour combinations.
The court found that Top Temp's use of its logo in combination with the words ‘Top Temp’ and/or ‘Top Temp bemanning’ did not constitute a violation of Randstad's trademark. The reason was that the words were the dominant features and reflected Top Temp’s name. Therefore, the Borgarting Court of Appeal agreed with the Oslo District Court on this point.
However, when considering the similarity of the two signs by themselves, the Court of Appeal was split: the minority found, like the Oslo District Court, that Top Temp's logo did not violate Randstad's trademark, while the majority stated that neither the mark nor the logo was very distinctive. However, when deciding on the similarity of the signs, it was important to assess how they were perceived spontaneously, rather than after a thorough examination of their details.
According to the court, Randstad's trademark gave an impression of quality, with a simple and clean design. On the other hand, Top Temp's logo conveyed the impression of something impulsive, rough and youthful. The main feature in both figures was a design consisting of two right angles back to back.
However, the main difference between the signs was the orange background (resembling an orange button) in Top Temp's logo. If Randstad's trademark was to be used in white against an orange background, the only difference with Top Temp's logo would be the shape of the button. When taking the high degree of similarity between the services into account, such a difference was not sufficient to create the necessary distance between the signs.
On the basis of the above, the majority of the Borgarting Court of Appeal concluded that there was a risk of confusion between the two signs. The court thus held that Top Temp should be prevented from using its logo without any additional features in any colour combination.
Felix Reimers and Thomas Hagen, Advokatfirmaet Grette DA, Oslo
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