Bird & Bird’s IP practice in Brussels has obtained a well-balanced judgment in October 2002 from the Appeal Court on a trade mark infringement case involving the holder of the Benelux trade mark "Gobelins Art".
"Gobelin" has been the name of a French tapestry tissue for many centuries. Bird & Bird’s client Parcles is a company selling bags and tourist gifts made of "Gobelin" tissue in the Zaventem Airport and Brussels City Center under the trade mark "Gobelins Art". The trade mark “Gobelins Art” had been registered in the Benelux countries for leather and tourism products, but not for tapestry.
The defendant had filed the trade mark "Nathalies Gobelin" for similar bags and products that the Parcles trade mark had been registered for, and used it on these products in the same way as Parcles. The defendant’s position was that the word "Gobelin" was descriptive and indicated the quality and composition of the product. It was not disputed that the infringing products were made of the tissue commonly referred to as "Gobelin".
The Brussels Court nevertheless found for infringement, because it was of the opinion that the specific way in which the word "Gobelin" was used by the defendant did not serve as an indication of quality or composition, but could only be understood as an indication of origin, i.e. as a trade mark to distinguish bags, for which Parcles held a trade mark. The trade mark “Gobelins Art” was found valid and the defendant's mark was seen as being easily confusedwith “Gobelins Art”.
The court however added an important point that the injunction would not prevent the defendant from using the word “Gobelin” in a way that would not be perceived as an indication of origin but only as an indication of quality or composition of the products.
Bruno Vandermeulen, Bird & Bird Partner and head of Intellectual Property in Brussels said :
“The decision is an interesting application of how our Benelux courts enforce potentially descriptive trade marks in an equitable but still forceful way. Instead of preventing such marks from being registered as a trade mark, the Brussels court has tailored the conditions for the enforcement of the “Gobelins Art” trade mark. We think this is a very good outcome.”
For more information, please contact Larry Cattle, Director of Marketing, on +44 (0) 20 7415 6156.