Many people immediately think of the brand Wendy’s as a fast-food chain from the United States, but did you know that in the Netherlands a snack bar named Wendy’s was established in 1988? These parties have been involved in a lengthy procedure about the use of the Wendy’s trade mark. On 2 November 2021, the Court of Appeal of ‘s-Hertogenbosch passed judgment in an appeal.
The fast-food chain Wendy’s is based in the United States and wanted to expand into Europe at some point, including the Benelux countries. For this expansion, the American fast-food chain would like to register the Wendy’s trademark in Europe, so that it can obtain an exclusive right.
However, the owner of the snack bar in Goes already owns the Benelux word mark Wendy’s for: i) catering services including services of snack bars and ii) snack products. This trademark gives him an exclusive right in the Benelux countries.
The fast food chain decided to start proceedings against the snack bar in Goes to have the trademark declared lapsed. The fast-food chain argued that the snack bar in Goes did not use the Wendy’s trademark sufficiently for both the snack bar itself and the snack products to maintain it (also called ‘genuine use’).
Genuine use of a trade mark
When a trademark is registered, it is intended that this trademark will actually be used. In some cases, a trademark may be registered but not used, or at least not sufficiently. In such cases, it is possible to have such trademarks removed from the trademark register. The principle of (insufficient) ‘genuine use’ may then be invoked. If there is no question of genuine use, the trademark will be removed from the trademark register and the way will be cleared for others who really want to use the trademark.
In case law it has been decided that there is genuine use when the trademark is being used in order to find or maintain an outlet for the marked goods or services.*
The court ruled in the Wendy’s case (in first instance) that the mark had been put to genuine use by the snack bar. This was because the trade mark had been applied to the windows and façade of the snack bar, the trade mark had been incorporated into the logo and the interior of the snack bar, the trade mark had been printed on work clothing and was on the packaging of the products provided. There was therefore no reason to have the trademark cancelled.
With regard to the use of the Wendy’s trademark for snack products, the court ruled differently. The court ruled that in the case of the snack products there was no question of genuine use, because the snack products sold at the snack bar in Goes were usually not sold to the consumer under the name Wendy’s.
The Court of Appeal of ‘s-Hertogenbosch confirmed the judgment of the district court.
Both the District Court and the Court of Appeal have ruled that the snack bar in Goes used the Wendy’s trade mark sufficiently for catering services. This means that the owner of the snack bar remains the owner of the trademark for such services in the Benelux.
With regard to the use of the Wendy’s trade mark for snack products, both authorities ruled that there was no genuine use. Therefore, the American fast-food chain may register and use the Wendy’s trademark for snack products.
Read the judgment?
The full appeal decision can be read via this link (in Dutch).
* CJEU 11 March 2003, ECLI:EU:C:2003:145 (Ansul/Ajax).