On 27 October, the Dutch Supreme Court handed down its ruling in a case between publisher Noblesse Uitgevers B.V. and Jiskefet B.V. on whether the use of ‘Jiskefet’ in a book title infringes the trademark rights of Jiskefet B.V. In short, the Supreme Court decided that using ‘Jiskefet’ as (part of) a book title does not amount to trademark infringement of Jiskefet.
Jiskefet B.V, founded by two creators of the renowned Dutch satirical TV programme Jiskefet, is the proprietor of the Benelux trademark JISKEFET. Since November 2021, Noblesse Uitgevers has been publishing a book titled ‘Jiskefet Encyclopaedia’ with the Jiskefet sign on the cover, without the knowledge and consent of the creators of Jiskefet.
In seeking an injunction, the trademark proprietor relied on Article 2.20(2)(d) of the Benelux Convention on Intellectual Property (BCIP). This article allows a trademark proprietor to prevent a third party from using a sign for purposes other than those of distinguishing goods or services if that use would, without due cause, take unfair advantage or is detrimental to the distinctive character or the reputation of the trademark (cf. Article 10(6) of the Directive 2015/2436).
(use, without) due cause
The court in the first instance ruled that the use of ‘Jiskefet’ as (part of) a book title could be seen as 'use, without due cause, of a trademark other than for goods or services'. The Amsterdam Court of Appeal ruled that 'due cause' was present in the case at hand. According to the appellate court, ‘Jiskefet Encyclopaedia’ is an obvious title for a book about the TV program. Partly because of the fundamental right of freedom of information, there was due cause to use the trademark.
Dutch Supreme Court ruling
Before the Supreme Court, Jiskefet argued that Noblesse uses the sign ‘Jiskefet’ to indicate characteristics of its book, and that situation is subject to Article 2.23(1)(b) BCIP (cf. Article 14(b) of the Directive 2015/2436). This article provides that the proprietor of a trademark cannot oppose the use of the trademark to designate a characteristic of the goods or services, provided there is honest use in industry and trade. According to Jiskefet, there was no such honest use in industry and trade in this matter.
In a clear decision, the Supreme Court rejected this argument. The ‘due case’ test under Article 2.20(2)(d) BCIP (is there infringement?) should be separated from the subsequent test on the limitations of the effects of a trade mark of Article 2.23(1)(b) BCIP. After all, Article 2.23 of the BCIP – in the words of the Supreme Court - “limits the rights of the trademark proprietor and does not expand them”. With this decision, the Supreme Court underscores the role of the ‘due case’ test in trademark in-fringement cases where the defendant's use of the sign is limited to use other than distinguishing goods or services.