LJN-number:AP2368Case no.:C0200726/MA
Source: Court of Appeal 's-Hertogenbosch
Date of judgment: 8-06-2004
Date of publication: 21-06-2004
Kind of action: civil – trade matter
Kind of proceedings: appeal
typ. KD
cause-list no. C0200726/MA
JUDGMENT OF THE COURT OF APPEAL IN 's-HERTOGENBOSCH,
fifth section, dated 8 June 2004,
rendered in the action between:
LANCÔME PARFUMS ET BEAUTÉ et Cie S.N.C.,
a legal entity under French law,
having its registered office in Paris (France),
appellant in the appeal on the merits by writ of summons dated 19 June 2002,
respondent in the cross appeal,
procurator litis: Mr. J.E. Lenglet,
and:
1. KECOFA B.V.,
a private company with limited liability incorporated and organised under Dutch law,
having its corporate seat in Kerkrade,
2. [RESPONDENT 2],
residing in [Residence],
respondents in the appeal on the merits by the abovementioned writ,
appellants in the cross appeal,
procurator litis: Mr. J.A.Th.M. van Zinnicq Bergmann,
in the appeal against the interlocutory judgment rendered by the Maastricht District Court on 18 April 2002 between appellant in the appeal on the merits –Lancôme- as claimant and respondents in the cross appeal –hereinafter jointly referred to as Kecofa c.s. - as defendants.
1. The Proceedings in the First Instance (matter no. 58623/HA ZA 00-776)
For the proceedings in the first instance, the court of appeal refers to the abovementioned interlocutory judgment.
2. The Appeal Proceedings
2.1. In the statement of appeal also document containing exhibits, Lancôme advanced four grounds and moved for a reversal of the judgment appealed against and, in brief, after a decrease of claim that was not announced as such, for allowance of the claims mentioned in the originating summons under I up to IV, and ordering Kecofa c.s. to pay the costs of these proceedings.
2.2. In the defence on appeal, Kecofa c.s. disputed the grounds, submitted an exhibit and moved, in brief, that the grounds which Lancôme advanced against the judgment appealed against be held groundless.
Furthermore, Kecofa c.s. initiated a cross appeal, advanced two grounds in it and moved, in brief, for reversal of the judgment appealed against, and moved that the court of appeal had to give judgment again, denying Lancôme’s claim for procedural reasons.
2.3. Subsequently, Lancôme has filed a document containing exhibits in the appeal on the merits, also defence on appeal in the cross appeal, also document containing exhibits in the cross appeal. In the cross appeal, Lancôme moved for rejection thereof, with the joint and several order for Kecofa c.s., the judgment having immediate effect, to pay the costs of the proceedings.
2.4. Subsequently, Kecofa c.s. have submitted a defence in the appeal on the merits.
2.5. On 14 January 2004, Kecofa c.s. filed the documents of the first instance and of the appeal of the actions mentioned below under 4.2.3 with the court registry of this court of appeal.
2.6. The parties have both given arguments for their matter, Lancôme by Mr. Ch. Gielen, attorney in Amsterdam and Kecofa c.s. by Mr. J.J.M. Goltstein, attorney in Kerkrade. The attorneys have given their arguments by means of submitted pleading notes.
2.7. At the hearing, Lancôme requested to be allowed to submit some three exhibits to the court, which had been sent to the court of appeal and the opposite party beforehand, in letters of 13 February 2004 and 19 February 2004. Kecofa c.s. did not object thereto. This also applies for the judgment of the French Cour de Cassation dated 3 April 2001 as submitted by Lancôme at the hearing. This means that these exhibits are part of the procedural documents.
2.8. After the pleadings, the parties have submitted their case papers and asked for a judgment to be rendered.
3. The Grounds of Appeal
For the exact text of the grounds, the court of appeal refers to the statements of appeal.
4. The Assessment
in the appeal on the merits and the cross appeal
4.1. In ground 2 of the interlocutory judgment appealed to, the district court has determined from which fact this dispute is departed. This assessment is not disputed. The facts determined by the district court therefore form the departure point in appeal too.
4.2. As far as of interest here, this matter concerns the following.
4.2.1. Since 1985, Lancôme has been the owner of the (word)mark Trésor in the Benelux countries. Under the trademark Trésor, Lancôme brings cosmetic products, including perfume and eau de toilette, with the so-called Trésor-scent on the market in inter alia the Benelux countries.
4.2.2. Since 1993, [respondent 2] has been the owner of the (word)mark Female Treasure. [Respondent 2] has provided a licence to Kecofa (respondent 1). Since about 1993, Kecofa has brought bottles of eau de parfum on the market, with the trademark Female Treasure.
4.2.3. In the originating summons of 3 October 1994, Lancôme initiated proceedings before the Amsterdam District Court against Kecofa c.s. inter alia. In these proceedings, Lancôme claimed, in brief,
(i) the nullification of the Benelux filing of the wordmark Female Treasure made in the name of [respondent 2] and the official cancellation of its registration;
(ii) ordering Kecofa c.s. to refrain from further infringement of the wordmark Trésor of Lancôme;
(iii) the usual ancillary claims.
In its judgment of 17 May 1995, the Amsterdam District Court rejected these claims. This judgment was upheld by the Amsterdam Court of Appeal in its judgment of 17 April 1997. The appeal in cassation against this judgment has been withdrawn.
4.2.4. In the originating summons dated 13 July 2000, Lancôme initiated the current proceedings against Kecofa c.s. before the Maastricht District Court. In the first instance, Lancôme inter alia asserted that Kecofa c.s. have brought an eau de parfum on the market with the name Female Treasure:
a) that infringes its (word)mark right;
b) as a result of which they act unlawfully towards Lancôme;
c) that infringes its copyrights on that scent, as a result of which it has suffered and continues to suffer damage.
4.2.5. On the basis of the above, Lancôme, in brief, has claimed,
(i) an order that Kecofa c.s. cease and continue to cease their infringing, or their unlawful, acts,
(ii) a number of ancillary claims, as described in the originating summons.
4.2.6. Kecofa c.s. disputed the claims.
4.2.7. In the interlocutory judgment of 18 April 2002, the district court, as far as of interest here, ordered Lancôme to demonstrate that:
1) the combination of scents that it offers with the Trésor trademark meets the requirements applicable for protection by the copyright, in particular that of an own original character bearing the stamp of the author;
2) Lancôme must be considered as the author of this combination of scents;
3) the combination of scents that is sold under the trademark Female Treasure must be considered as copyright infringing versions or imitations of those that are sold under the trademark Trésor,
and for the remainder any further decision was stayed.
In the corrective judgment of 23 May 2002, the disposition of the judgment appealed to included that – as the court of appeal has understood; in the meantime – appeal is possible.
Competence District Court and Court of Appeal
4.3. On the basis of the Uniform Benelux Law on Marks (“BLM”), the court of appeal first officially determines that the Maastricht District Court was competent to take cognisance of Lancôme’s claims based on the BLM, as Kecofa c.s., the defendants in the first instance, have their place of business and residence respectively in Kerkrade. As the Maastricht District Court falls within the jurisdiction of this court of appeal, the court has the competence in appeal to take cognisance of the present claims.
Irrevocable Judgment
4.4. In the judgment appealed to, the district court judged, in brief, that Kecofa c.s. successfully invoked that the court orders rendered earlier between the parties and mentioned above under 4.2.3 impede that Lancôme again submits its claims based on trademark law before the court in the present proceedings.
4.4.1. Lancôme disputes this judgment of the district court in its first ground, containing that the district court was wrong not to involve Lancôme’s assertions with regard to the danger of dilution and the rights accruing to it for disputing it on the basis of section 13A(1)(c) BLM and article 6:162 Dutch Civil Code. By means hereof, in the first place, the ground brings up for discussion the question whether these grounds for Lancôme’s claims have also already been assessed in the earlier proceedings between the parties that have lead to the court orders referred to in the last paragraph, which court orders are – as the parties at itself both acknowledge– irrevocable between them.
4.5. With respect to the trademark ground as referred to in section 13A(1)(c) BLM as this is now – i.e. the authority of the trademark owner to oppose the use as a result of which unjustified benefit is derived from a trademark or the distinctive power of the trademark or the reputation of the trademark is prejudiced – the court of appeal is of the opinion that Lancôme’s claim in the earlier proceedings has already been assessed on the basis of this standard.
For, the Amsterdam court of appeal explicitly considered in the judgment in question of 17 April 1997 (ground 44) that its assessment should not be limited to confusion of origin but that it implied that it was judged whether the parties’ trademarks, in view of the particularities of the case and especially the distinctive power of the trademark Trésor, were similar to such degree that already as a result hereof the possibility existed that in a person who is confronted with the wordmark Female Treasure associations are called up with the wordmark Trésor. The Amsterdam court of appeal subsequently judged, just like the district court had in the first instance, that danger of association in that way did not occur.
This standard created by the Amsterdam district court can, if it does not comprise more, be put on a par with the standard of section 13A(1)(c) BLM.
4.5.1. Lancôme was right to point out that the currently applicable section 13A(1)(c) BLM requires that the claimant’s trademark is a trademark known within the Benelux area, and has argued that it should be assessed whether its trademark Trésor, as it asserts, meets that requirement. The parties further argued on the question whether the protection of section 13A(1)(c) BLM can also be invoked (despite the text of the section) against the use of similar products, which question has been answered in an affirmative way in the meantime by the judgments of the EC Court of Justice dated 9 January 2003 (Davidoff/Gofkid) and 23 October 2003 (Adidas/Fitnessworld).
The court of appeal is of the opinion that this can be left aside. For, it has turned out that the court in the earlier proceedings has tested the trademark Trésor (known or not) with respect to the use of Female Treasure for the products of Kecofa c.s. (similar or not) against the standard referred to above in ground 4.5, which, as stated above, can be put on a par with the standard of section 13A(1)(c) BLM.
4.5.2. This is why the trademark law claim on this basis cannot be discussed in the current proceedings.
Lancôme’s first ground, as far as related to the trademark law basis, therefore fails.
Unlawful Act
4.6. Ground I of Lancôme furthermore goes to argue that in the assessment of the (danger of) dilution the district court was wrong not to assess whether Lancôme might have had the right to dispute it – which had not been granted in the earlier proceedings on the basis of trademark law – on the basis of article 6:162 Dutch Civil Code, because this provision was not used as basis for Lancôme’s claims in the earlier proceedings.
4.6.1. The court of appeal is of the opinion that it can be left aside whether Lancôme had based its claims in the earlier proceedings on that provision as the application of that provision cannot lead to the allowance of Lancôme’s claims with respect to the trademark use by Kecofa c.s.
For, for the allowance of the additional protection on the basis of article 6:162 Dutch Civil Code against (danger) of dilution there is only room if the trademark law standard does not offer any protection. In the opinion of the court of appeal, the trademark law standard which the district court applied in the earlier proceedings – i.e. whether the parties’ trademarks were that similar that already as a result hereof the possibility existed that someone who was confronted with the wordmark Female Treasure gets associations with the wordmark Trésor – so comprehensive that all forms of (danger of) dilution are covered. This is why there is no room for additional protection on the basis of art. 6:162 Dutch Civil Code.
4.6.2. Pursuant to the formulation of ground I, Lancôme’s appeal complaint about the excluded application of article 6:162 Dutch Civil Code seems to be restricted to the application of that provision to the extent to which it offers a basis for challenging indirect trademark infringement.
4.6.3. In this respect, Lancôme asserted that Kecofa c.s. act unlawfully towards it, because they, as a result of the use of the trademark Female Treasure as “cheaper alternative” incite the resellers to citing the perfume Trésor, for which the product Female Treasure forms the alternative. As a result thereof, Kecofa c.s. knowingly and wilfully causes trademark infringement through the resellers in question, states Lancôme.
Kecofa c.s. substatiatedly disputed this standpoint.
As in this stage of the proceedings it was on Lancôme’s way to substantiate its assertion further and it has omitted this, the court of appeal also passes over this assertion as insufficiently substantiated.