Court of Appeal of The Hague Rules on Teletubbies
A discussion of the judgment of the Court of Appeal of The
Hague of 31 March 2009
The British company Ragdoll Productions is the creator of the
well-known children's program the Teletubbies in which
the colorful dolls of the same name play the leading part. Ragdoll
is the holder of several Benelux and Community TELETUBBIES
trademarks dating back to 1997 and 1998, which are registered for
all kinds of merchandising products such as dolls, clothing, toys,
etc.
In August 1998 a certain Mr. Jadnanansing registered the Benelux
word mark TELETUBBIES for inter alia merchandising
articles. In 2000, Ragdoll went to the Court of The Hague and
claimed the nullification of this trademark registration and an
injunction banning Jadnanansing from using the TELETUBBIES
trademark. The Court nullified the trademark registration, but only
as far as it concerned goods and services similar to the goods and
services involved in Ragdoll's trademarks. For the rest,
Jadnanansing's trademark registration remained in force. The
Court denied the claim for infringement, because the use of the
sign TELETUBBIES for merchandising articles was not considered to
qualify as trademark use. According to the Court, the public only
takes the word TELETUBBIES on such articles as a reference to the
Teletubbies 'characters' and the attraction of
these articles is in that reference. Ragdoll lodged an appeal
against the judgment of the Court.
Court of Appeal of
The Hague
With reference to case law of the European Court of Justice, the
Court of Appeal emphasized that the function of origin is the most
essential function of a trademark; a trademark serves as a
guarantee that all goods bearing the trademark were made by or
under the control of the same enterprise. There is no question of
use for the distinction of goods and services - read: trademark use
- if the public does not take it as such, for example in the case
of a social/company name, trade name or company emblem. If a
trademark has been applied on goods in connection with consumer
sale, the Court of Appeal held that there is use of that trademark
for purposes of distinguishing those goods, if the impression
arises that there is a connection in the course of trade between
the relevant goods and the trademark proprietor. According to the
Court of Appeal there is no such connection in exceptional cases
only, for example in the case of a car brand on a toy car, when the
public takes the use of the brand (only) as an indication that the
car is a scale model reproduction of a vehicle of that car
brand.
In general the Court of Appeal thinks that the public will see a
connection between branded articles and the trademark
proprietor, also if it concerns characters and (sports)
merchandising articles. The public knows, according to the Court of
Appeal, that the use of characters or symbols of sports clubs or
sports events is reserved to specific rightholders, and that the
goods are put into circulation by or with the permission of the
trademark proprietor. In this context the Court of Appeal argues
that the public also distinguishes 'real' merchandising
articles, for example TELETUBBIES merchandising articles, from
'imitation'. That the public takes the word TELETUBBIES
(also) as a reference to the Teletubbie characters and the
attraction of the articles is in this reference, as the Court
considered, does not change this according to the Court of
Appeal.
Unlike the Court, the Court of Appeal concluded that both the
use by Ragdoll and the (threatened) use by Jadnanansing of the
TELETUBBIES trademark constitute trademark use. Since the
trademarks are (practically) identical, the Court of Appeal found
that there is a likelihood of confusion, so that Jadnanansing
commits trademark infringement as far as he uses TELETUBBIES for
goods or services similar to the goods or services designated under
the trademark registrations of Ragdoll. Furthermore, the same
applies as far as Jadnanansing is using the trademarks for
non-similar goods or services, as the Court of the Appeal
considered the TELETUBBIES trademarks to be well-known - at the
time of the decision - and Jadnanansing takes unfair advantage of
them and/or causes detriment to their distinctive character or
reputation without due cause. Therefore the Court of Appeal allowed
Ragdoll's claim for infringements in its entirety.
The Court of Appeal has not allowed the claim to nullify
Jadnanansing's trademark registration for non-similar goods
yet, because it needs to be established still whether Ragdoll's
TELETUBBIES trademarks were already known when Jadnanansing
registered his trademark (in 1998). The Court of Appeal allowed
Ragdoll to provide further proof of this if necessary. However,
this does not seem to be necessary anymore, because as appears from
the online Benelux trademarks register Jadnanansing's trademark
has meanwhile been deregistered.
Conclusion
It seems that the entertainment, sports and events industries
can heave a sigh of relief after this judgment. Whereas the
judgment of the Court still seemed to open the door to
'imitation' merchandising articles (and the use of
another's trademark to such articles), the Court of Appeal has
now slammed this door shut after proceedings of no less than nine
years. In principle the application of a trademark on consumer
goods constitutes trademark use, also in the case of merchandising
articles. Trademark proprietors may therefore rely on their
registered trademarks (registered for merchandising articles
derived from their core business) against the use of such
trademarks for or on imitation merchandising articles.