On 13 January 2016, the President of the Dutch-speaking section of the Brussels Commercial Court (the “Court”) ordered supermarket chain Aldi and brewery “Brouwerij Martens” (“Martens”) to cease the use of the Buval beer sign, which was held to infringe InBev’s Jupiler trademark (Dutch-speaking section of the Brussels Commercial Court, 13 January 2016, InBev Belgium NV v. Brouwerij Martens NV, Bockhold NV, Aldi Holding NV, Aldi Inkoop NV and Miller Graphics Roeselare NV).
In August 2015, Aldi had started selling its private-label Buval beer, which is brewed and packed by Martens, in a graphically redesigned format (new sign, new packaging, new shape of bottles, etc). In September 2015, this came to the attention of InBev, which noticed that the Buval sign bears similarities to its Jupiler trademark.
InBev brought a cease-and-desist action before the Court for infringement of its Jupiler trademark. InBev based its claim on Article 2.20.1.c of the Benelux Convention on Intellectual Property (Trademarks and Designs) of 25 February 2005 (the “BCIP”). Pursuant to this provision, the holder of a registered trademark is entitled to prohibit any third party, without its consent, from “using in the course of trade a sign which is identical or similar to the trademark for goods or services which are not similar to those for which the trademark is registered, where the trademark enjoys a reputation in the Benelux territory, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation of the trademark”. Although, according to its wording, this provision applies only to non-similar goods or services, it follows from the case law of the Court of Justice of the European Union (“ECJ”) that it must be applied in such a way as to grant protection for non-similar goods or services which is at least as extensive as that existing for identical or similar goods or services (See, ECJ, 23 October 2003, case C-408/01, Adidas-Salomon AG, formerly Adidas AG and Adidas Benelux BV v. Fitnessworld Trading Ltd, §§13-22). For the application of Article 2.20.1.c of the BCIP, it is thus irrelevant whether the goods or services are non-similar or similar/identical to those covered by the registered mark with a reputation.
The Court therefore assessed whether the conditions of Article 2.20.1.c of the BCIP were satisfied. It concluded they were, based on the following considerations.
- Both Aldi and Martens used the Buval sign in the course of trade. For Aldi this was obvious and not in dispute. Martens, in contrast, challenged having used the sign in the course of trade. The Court dismissed that argument given that Martens affixed the sign to the Buval cans, bottles and packaging, which, pursuant to Article 2.20.2.a of the BCIP, qualifies as “use” of a trademark or a similar sign. Moreover, the Court noted that Martens’ name is the only name appearing on the Buval cans, bottles and packaging which do not mention the name “Aldi”. In addition, the Court considered that Martens, rather than Aldi, was responsible for compliance with food law and thus played a role in the commercialisation of Buval.
- Aldi and Martens used the Buval sign for a product which is identical/similar to that for which the Jupiler trademark is registered, namely for a beer product and lager (“pils”) in particular.
- The earlier Jupiler trademark enjoys a reputation with the relevant public, which the Court understands to include the average, normally informed and reasonably careful beer consumer in Belgium and the Netherlands. In this regard, the Court considered factors such as: (a) Jupiler’s market shares in Belgium and the Netherlands; (b) InBev’s significant marketing efforts to promote the Jupiler brand; and (c) the fact that Jupiler is a widely renowned beer brand in both Belgium and the Netherlands.
- The Buval sign is similar to the Jupiler trademark. While acknowledging that the Buval sign and the Jupiler trademark are not identical, the Court stressed that they are very similar. Aldi and Martens use a very similar layout/design and nearly exactly the same colours and colour combination as InBev. Hence, the Court ruled that the Buval sign is reminiscent of the Jupiler trademark for the average consumer. The Court continued that this is all the more true in view of the fact that the Jupiler brand is particularly renowned. Moreover, when buying beer in a supermarket, the average consumer generally does not take the time to read all of the information displayed on the product but, instead, takes a decision based on the global visual impression of the product’s label or packaging. In this regard, the Court considered it to be irrelevant that Aldi currently does not sell Jupiler. It noted that nothing would prevent Aldi from revising that policy in the future, in which case the Buval and Jupiler brands would be used next to each other. Moreover, the Court also dismissed Aldi’s argument that there is a separate public for each product.
- Aldi’s and Martens’ use of the Buval sign is detrimental to the distinctive character of the Jupiler trademark (dilution). Referring to the Interflora judgment of the ECJ (ECJ, 22 September 2011, case C-323/09, Interflora Inc. and Interflora British Unit v. Marks & Spencer plc and Flowers Direct Online Ltd. – see, this Newsletter, Volume 2011, No. 9, p. 3), the Court noted that the use of the Buval sign for identical products which are traded at a large scale by Aldi could reduce the ability of the Jupiler trademark to distinguish the Jupiler beer from the Buval beer. At the end of the process of dilution, the Jupiler trademark may no longer be capable of creating an immediate association, in the minds of consumers, with the Jupiler beer.
- Aldi and Martens have no valid reason for using the Buval sign.
In view of the above findings, the Court concluded that all conditions of Article 2.20.1.c of the BCIP were satisfied. It therefore ordered Aldi and Martens to cease the sale and advertising of Buval beer with the disputed sign under forfeiture of a penalty payment of EUR 250 per individual infringement (with a maximum of EUR 1 million).
To comply with the Court’s order, Aldi and Martens have, in the meantime, changed the colour of the Buval packaging from red into yellow.
This case is reminiscent of the legal battle between InBev and Alken-Maes which took place in 2012 and 2013 over the use of the colour blue. Alken-Maes successfully sued InBev for infringing its Benelux colour trademark covering a special shade of blue, due to the new design of the cans, bottles and packaging of the “Jupiler BLUE” pils beer in 2012. Both the first instance court and the Court of Appeal ruled that InBev had infringed Article 2.20.1.c of the BCIP. The Court of Appeal considered that the colour trademark Maes is a well-known trademark for beers and that InBev’s use of the blue colour for Jupiler had a detrimental impact on the distinctive character of the trademark Maes. In addition, the Court of Appeal found that there was a risk that the colour blue would be conceived by an average beer consumer as referring to beer in general as opposed to the specific beer products of Maes (Brussels Commercial Court, 6 July 2012, Brouwerijen Alken-Maes NV v. InBev Belgium NV (see, VBB on Business Law, Volume 2012, No. 7, p. 9, available at www.vbb.com) and Brussels Court of Appeal, 21 October 2013, InBev Belgium NV v. Alken-Maes Brouwerijen NV (see, VBB on Business Law, Volume 2013, No. 11, p. 8, available at www.vbb.com)).
