31 July 2018
The District Court of The Hague rendered a decision on 13 June 2018 in proceedings brought by Rolls-Royce against Rebel & Rich.
Rolls-Royce, the world-famous company, owns several European trade marks including the figurative mark above left which is registered for classes 12 (‘cars and parts thereof’), class 14 (‘jewellery’), 18 and 25 (including ‘travel bags and ‘clothing’):
The Defendant in this case is Rebel & Rich. This Dutch company was founded in 2015 and offers for sale jewellery, such as rings, bracelets, necklaces and earrings. Rebel & Rich sells these items on the internet via the website www.rebelandrich.com. The jewellery is inspired by the type of jewellery worn by celebrities although these products are offered at a low price. Rebel & Rich owns the Benelux word and figurative mark which is inter alia also registered for jewellery.
Rolls-Royce claimed that the use of the Rebel & Rich Benelux word and figurative mark for jewellery infringed its trade marks and asked the court inter alia to grant an injunction.
Rolls-Royce firstly based its claims on article 9 (2) (b) European Union Trade Mark Regulation (“EUTMR”) and stated there is a likelihood of confusion, because the Rolls-Royce trade marks are well known and because the most distinctive element (the duplicate ‘R’) of the trade marks is identical. In addition, Rolls-Royce argued that similar types of goods, namely jewellery, are sold by both companies.
However, the court ruled that there is no risk for a likelihood of confusion. The court agreed there are some similarities between the two signs (such as the duplicate ‘R’), but found that the average consumer will not only focus on the ‘RR’-part of the Rebel & Rich trade mark but will look at the sign as a whole, including the ring, the diamond and the words ‘Rebel&Rich’, partly visualised in a distinctive color (bright pink). The court further held that the most distinctive and dominant part of the sign is not the duplicate ‘R’ but the ‘Rebel&Rich’ part and concluded there is a low degree of visual similarity. In addition there is no aural or conceptual similarity between the marks according to the court.
In addition, Rolls-Royce based its claims on the well-known status of its marks and relied on article 9 (2) (c) EUTMR. In that regard, the court ruled that Rebel & Rich did not take any unfair advantage of the distinctive character or reputation of Rolls-Royce and held that the duplicate ‘R’ refers to ‘Rebel & Rich’ (and not to Rolls-Royce). The fact that Rolls-Royce cars are often used by celebrities and that Rebel & Rich uses pictures of celebrities when offering its jewellery for sale, does not mean Rebel & Rich is trying to take unfair advantage of the reputation Rolls-Royce has amongst celebrities.
In conclusion, the fact that the Rolls-Royce brand is world-famous because of its role in the car industry, was not enough to prevent a small Dutch company from using the duplicate ‘R’ as part of its trade mark to sell jewellery. We now have to wait and see if Rolls-Royce appeals this decision.
by multiple authors