Benelux: Porsche prevail over independent "specialist"

From the Marques Class 46 blog comes this unedifying tale of trade mark absolutism (I shall steer clear of the pejorative expression "bullying", because often these excessively protective cases are driven by considerations of shareholder value rather than the sort of vindictiveness that that word implies) courtesy of my friend Gino van Roeyen (Banning). The story is hardly novel: there have been plenty of cases of independent specialists overstepping the mark when referring to what they specialise in. Two important, related, questions arise: where is that mark, and what does the infamous proviso to Artice 6(1) of the trade marks directive ("honest use in industrial and commercial matters") mean in the independent aftermarket?

Please, read Gino's account of the case, because I do not propose to write it all again. I do not enjoy typing enough for that. Initially I found it encouraging: here, at last, was a court taking a sensible view of what the designation "specialist" might be taken to mean in a situation such as this. At first instance, the specialist, Mr van den Berg, had succeeded. Calling yourself a specialist with reference to someone else's trade mark does not imply a special connection with the owner of the trade mark. He seemed to have done enough to avoid confusion in the marketplace. But on appeal the trade mark owner won: the court, as in previous cases (different courts), held (if I may paraphrase) that calling yourself a Porsche specialist amounted to holding yourself out as an official dealer. As it was once explained to me: a manufacturer's official dealers are specialists, and they are independent. (On the other hand, I will always remember Trevor Finn at a Motor Law conference some years ago alluding to the fact that Wilberforce and he came from the same town, and likening the manufacturer-dealer relationship to slavery.)

Now, I think there are some important differences between different parts of the market. In the mass-market sector, it might be fair enough to say that holding yourself out as a Ford specialist might confuse customers. (OK, I know confusion is not the test here, but it is a reasonable way to look at the impact of the proviso.) Owners of such cars have a different sort of approach to all things to do with motoring than those of specialist cars. My point is that the owner of a Porsche motor car might reasonably be thought to be enough of an enthusiast to understand the nature of the trader with whom he or she proposed to do business. To a petrolhead, the expression "specialist" has a meaning quite distinct from "dealer" or "authorised repairer", and the courts should recognise that the relevant public is not a single body of people but several different groups.

Mr van den Berg was described as great Porsche lover. He might think otherwise now.