Recently, the Dutch Supreme Court ruled in a case brought by LUCOVITAAL against competitor Leefvitaal. The case was about 
against 
, in which the packaging also played a role.
The decision: LUCOVITAAL has forfeited the right to take action by years of inaction, knowingly tolerating the use of Leefvitaal. Even in cases of clear infringement, after 5 years of demonstrable tolerance, you can no longer act regardless of the similarity between the trademarks or damage.
Incidentally, the court also found the marks to be insufficiently similar from a legal perspective to constitute a trademark infringement. The similarity is in the descriptive elements. Even if the marks are similar, you are 1-0 behind as a trademark owner if you have a partially descriptive mark.
What is the case LUCOVITAAL versus Leefvitaal about?
LUCOVITAAL has been operating as a supplement brand for years and has registered several word marks and logos.
In 2007, the, in LUCOVITAAL’s view, infringing Leefvitaal also dives into the supplements business, also with a little man in the middle as its logo and the identical word VITAAL.
LUCOVITAAL sends a Cease & Desist letter but Leefvitaal does not cooperate, after which LUCOVITAAL….DOES NOTHING!
Leefvitaal’s brands remain on the market unchanged for many years.
Until Leefvitaal, in 2019, moves its brand from the bottom of the packaging to the top; same logo, same brand, just at the top of the packaging, just like LUCOVITAAL.
For LUCOVITAAL, reason to go in hard as this was an outright infringement of their trademark rights. In LUCOVITAAL’s view, the relocation of the logo resulted in a whole new trademark that could simply be acted against. With this argument, LUCOVITAAL tried to undermine Leefvitaal’s argument that LUCOVITAAL has no right to act against them because of forfeiture of rights.
The court disagreed with LUCVITAAL, and so do we.
The trademark Leefvitaal has essentially remained the same and LUCOVITAAL is responsible for the consequences of its choice to “leave it at that” in 2009.
In short: only object to a brand if you also intend to persevere.
It is of course different if you are not extremely bothered by a similar brand, but would prefer a change. In many cases, you can see how far you get and if an action has no results, leave it at that. Nothing ventured, nothing gained.
Incidentally, tolerance and potential loss of rights only applies if there has been contact about the alleged infringement. The mere co-existence of two trademarks for a longer period is not conscious tolerance. So you can still take action.
Are you considering an action, or have you received an objection? Feel free to contact us for consultation.
