Use of mark in educational competition held to constitute use in the course of trade

Responsible Young Drivers (RYD) is a Belgian not-for-profit organisation promoting road safety. Throughout the year, it organises events and campaigns to raise awareness and promote responsible behaviour, particularly among young people. One of its most well-known activities is its annual New Year's Eve initiative, during which it makes sober drivers available to take people home after a night of partying. Notwithstanding the success of this initiative, RYD's campaigns seek to highlight its other activities, so that it is not regarded as a free party-cab service.

RYD owns the trademark RESPONSIBLE YOUNG DRIVERS. It previously used the services of advertising agency McCann Erickson for its promotional campaigns. Some time after the collaboration had ended, McCann Erickson contacted various marketing schools to organise a competition for students. The assignment was to create a fictional campaign to promote RYD and its New Year's Eve initiative. The prizes included internships at the agency's New York offices. However, McCann Erickson had not sought RYD's consent. RYD objected to the use of its trademark for the competition.

Rather than abandoning its competition, McCann Erickson replaced its former client's name with a fictional organisation, 'The Night Riders' Mob'. RYD considered that this was even more damaging to its reputation, as it would associate the organisation with free rides home for drunk drivers. It sought an injunction and damages based on several grounds of trademark infringement and unfair trade practices.

On November 20 2008 the Brussels Commercial Court rejected RYD's claims on the grounds that use of the term 'Responsible Young Drivers' by McCann Erickson in an educational competition did not constitute use in the course of trade or as a trademark. The court did not take into account the fact that the prizes for the competition winners included internships, on which basis the term could be seen as having been used in a recruitment campaign for positions with McCann Erickson. Moreover, the court agreed with McCann Erickson's argument that it had not taken unfair advantage of RYD's trademark, which had been replaced by a fictional name.

RYD appealed to the Brussels Court of Appeal. On February 7 2012 the Brussels Court of Appeal upheld the appeal, finding all of RYD's claims to be well founded.

RYD's claims for trademark infringement were based on Article 2.20(1)(a) and, secondarily, Articles 2.20(1)(c) and (d) of the Benelux Convention on Intellectual Property. Article 2.20(1)(a) of the convention is a direct transposition of Article 5(1)(a) of the EU Trademarks Directive (2008/95/EC), which grants a trademark owner the exclusive right to prevent third parties from using, in the course of trade, a sign which is identical to the trademark, in relation to goods or services which are the same as those for which the trademark is registered, unless the third party has the owner's consent.

Following settled case law from the Court of Justice of the European Union (see Arsenal Football Club plc v Matthew Reed (C-206/01); Anheuser-Busch (C-245/02); Adam Opel v Autec (C-48/05); Céline (C-17/06); L'Oréal v Bellure (C-487/07)), the Brussels Court of Appeal confirmed that, in order to assess the existence of a so-called 'double identity' trademark infringement under Article 5(1)(a), five conditions must be met. The use must:

• relate to a sign that is identical to the registered trademark;
• be in the course of trade;
• be without the consent of the trademark owner;
• be in respect of goods or services that are identical to those for which the trademark is registered; and
• affect or be liable to affect the functions of the trademark.

The absence of the trademark owner's consent was clearly not at issue in this case. Moreover, the sign used by McCann Erickson was identical to RYD's trademark. However, the issue of whether McCann Erickson had used the sign in the course of trade was less clear. The court in first instance had found that McCann Erickson had not done so.

However, the appellate court found that McCann Erickson's use constituted use in the course of trade for two reasons:

• the sign had been used in a form of recruitment campaign in order to attract, or at least identify, potential future personnel; and
• the sign had been used in order to create an association with RYD's activities, enabling McCann Erickson to profit from the latter's reputation among students, the press and potential clients - as such, it had been used as a promotional tool and with a view to creating goodwill.

Having established that the sign had been used in the course of trade, the Court of Appeal considered the services in respect of which it had been used, as compared to those for which the trademark was registered. Among other things, the trademark was registered for "advertisement and business management; advertisement services and distribution of advertising material" in Class 35 and "education and entertainment" in Class 41 of the Nice Classification. McCann Erickson had used the sign in a form of advertisement which, at the same time, served an educational purpose - namely, an educational competition in order to promote its business among marketing students. The court therefore found the services to be identical.

In its assessment of the final criterion - whether the use affects or is liable to affect one of the trademark's functions - the court referred to the previously cited EU case law (L'Oréal, at 58) and found that McCann Erickson's use of the words 'Responsible Young Drivers' affected the trademark's essential function of guaranteeing the origin of the services for the benefit of consumers, as well as its function of communication and investment. McCann Erickson had used the sign in such a manner that consumers would believe that the competition was at least jointly organised by RYD. As RYD's communications strategy and its related investments were specifically aimed at informing the public that RYD was not just a free taxi service for drunk drivers, the court found that McCann Erickson's use was detrimental to the reputation of RYD's trademark, and therefore affected its function of communication and investment. The replacement of the words in question with the term 'The Night Riders' Mob' had certainly not helped.

Therefore, the court granted all of RYD's claims based on trademark infringement and unfair trade practices. It ordered McCann Erickson to cease all use of the term 'Responsible Young Drivers' and to compensate RYD for the damage caused.

Sofie Cubitt, ALTIUS, Brussels