Trademark holder Grohe AG successfully appeared at the preliminary relief proceedings against the website, where (only) showers and faucets of Grohe are offered. The Court deemed the use of the domain name to be in violation of the trade marks of Grohe. The website holder, R&M, must transfer the domain name.

The use of was viewed by the Court as the use of that sign as a trade mark. Also, if R&M used the sign as a trade name, it did not, according to the Court, detract from the fact that trade mark use exists. After all, noted the Court, R&M was using the sign in such a manner that a connection arose between the trade name and the products that it was marketing or the retail service it was performing.

The risk of confusion exists, because (i) direct confusion is created concerning the origin of the products or other aspects thereof (for instance due to the creation of the impression that is affiliated with Grohe) and (ii) indirect confusion is created (for instance due to the creation of the impression that Grohe and R&M maintain a certain commercial relationship with each other). Through the use of the sign, the impression could, in the Court’s opinion, also be created that a commercial connection exists between R&M and Grohe that, for instance, implies that R&M is an official distributor of Grohe or otherwise has a special relationship with Grohe.

According to the Court, it was not necessary for R&M to incorporate the dominating element ‘grohe’ into the domain name. The statement on the website “ is an R&M company”, which R&M was relying on for the purpose of exculpation, did not compensate for the prominent placement of the sign on the website and the other use of the sign.

For that matter, Grohe also successfully advanced that R&M profited from its well-known Grohe trade marks. Since R&M also did not have any permission to use the Grohe marks, the trade mark infringement suit was allowed, R&M was ordered to destroy its advertising material and transfer the domain name.

The judgment (in Dutch) can be read in its entirety here.

Joost Becker

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