Benelux – Trademark Protection for a Two-Dimensional Design Upheld

The Benelux Court of Justice recently decided that Burberrys Ltd. was entitled to trademark protection for its well known tartan pattern, imprinted on the linings of its raincoats, thus, in effect, upholding the registration for the pattern granted by the Benelux Trademark Office. This ruling is the most recent in a case that arose when Burberrys brought an infringement action against Superconfex B.V., a Dutch competitor whose raincoat linings bore a similar pattern. Superconfex argued that the Burberrys’ pattern was not entitled to protection, in view of Article 1 of the Benelux Trademark Law which excludes from trademark protection features that affect the “actual value” of a product.

The Burberrys’ pattern, according to Superconfex, affected the intrinsic value or usefulness of the raincoats. However, this argument had already been rejected in an earlier decision by the district court which had held that the intrinsic value or utility of tartan imprinted material as a raincoat lining was not affected by the tartan pattern itself. The Benelux Court has now ruled, as follows:

1) that the exclusion of certain forms from trademark protection in Article 1 of the law only applied to three-dimensional forms; and

2) that consumer perception of the tartan pattern as a trademark was not a necessary criterion for trademark protection.
This decision is part of a trend by the Benelux Court to extend the reach of trademark law to provide trademark owners with protection for all distinctive features of their products. Trademark owners, therefore, have greater legal means at their disposal to prevent competitors from selling similar product designs in the Benelux countries.