“I don’t think they expected this from some hick from Zeeland. But my boss is a man of principles, he won't let anyone tell him what name he can or can’t put on his store.”
The manager of Wendy’s, a two-table snack bar in Goes, a small town in the Dutch province of Zeeland is quite clear. Their trademark battle with US fast food chain Wendy's runs deep. Wendy's versus Wendy's. David against Goliath in Goes, the Netherlands. And here too, the underdog wins.
The conflict goes back to 1997 and has been in and out of court-rooms ever since. The American Wendy's wanted to expand to Europe, but their hopes were dashed on a Zeeland beachhead.
Last week, 24 years after the first skirmishes, a Dutch Court of Appeal ruled that Dutch Wendy's trademark is indeed a valid trademark and that it can be used to oppose the registration of American Wendy's European trademark. That is to say, valid for restaurant services, but not for the products themselves, the hamburgers and the deep-fried snacks.
The court established that snack bar Wendy had used its Wendy's trademark in a normal way. Normal or genuine (economic) use is a very important concept in trademark law: if a trademark is not used normally, it can be declared invalid. The requirements for genuine use have been extensively elaborated in case law and legislation.
For restaurant services
What constitutes genuine use is largely determined by the relevant market, in this case the Dutch fast food market. In the Netherlands, the fast food market is (still) dominated by small neighborhood snack bars and not by fast food chains.
Wendy's in Zeeland is one of these typical Dutch snack bars and used its trademark on the shop front, on receipts, on bags, in advertisements et cetera. All very normal. And even though it had not been used in the other countries or even in other regions of the Benelux, the Benelux trademark of neighborhood snack bar Wendy’s was used in a completely normal economic way and was therefore judged to be valid for restaurant services in the whole of the Benelux.
But not for food products
However, Dutch Wendy’s trademark was not only registered for restaurant services, but also for hamburgers, deep-fried snacks and other food products. And the relevant Dutch market for those products is very different. Manufactures and suppliers are, on average, large (inter)national companies that sell large quantities to other companies, not to individual consumers. Selling individual hamburgers and snacks to customers cannot be seen as normal economic use with regard to snack bar’s Benelux trademark, which was therefore declared invalid for food products.
To make the long story short, snack bar Wendy's is a normal Dutch snack bar, but not a normal Dutch manufacturer of food products. Snack bar Wendy's can object to other snack bars or restaurants with a similar name, but not against the sale of Wendy’s hamburgers and other snack products in, for instance, supermarkets.
All in all, a setback for the billion-dollar American fast-food chain in a conflict that is likely to continue, in or out of court. Perhaps a lovely shared aspect can bring both parties a little closer: both businesses are named after the daughter of the founder. And both daughters can be proud of what their fathers have achieved.