A trademark application was recently filed in the Benelux for the word mark 'URUS' for various business and financial services. The application was filed by URUS Europe, a Dutch holding company with several sub-entities specialised in genetic research for the dairy and beef industry. The company was probably surprised to hear that an opposition was filed by luxury car company Automobili Lamborghini. It so happens that Lamborghini is the owner of the 'URUS' brand, which is used for its SUV range.
You may wonder, how can Lamborghini file an opposition against this trademark application when both companies operate in completely different sectors? After all, each trademark is registered only for those activities in which it is effectively marketed (see earlier blog on Brand Twins Lotus, Lotus and Lotus). The majority of oppositions are filed based on supposed likelihood of confusion, which requires certain degree of similarity in terms of both marks and activities. However, that is not the only reason to file an opposition.
General Brand Reputation
Both in the Benelux and in the European Union, it is possible to object to a trademark application by showing that a trademark has (general) reputation and that the subsequently registered trademark would take unfair advantage of, or damage, the distinctive character and reputation of the existing trademark. This allows the owner of the earlier mark to prevent infringing trademark registrations, on the one hand, and also to prevent dilution of their trademark. In this case, this was used by Automobili Lamborghini as the reason for this opposition. Brand reputation can be demonstrated by, for example, a market research.
Lamborghini's URUS brand lacks reputation
Unfortunately for Automobili Lamborghini, the Benelux Court of Justice ruled that they do not meet the conditions of general brand reputation. Lamborghini's trademark URUS is simply not sufficiently known. The evidence presented was only sufficient to demonstrate a reputation among a very specific audience, namely SUV users and thus not the general car users.
Since there was no real overlap with the relevant public for URUS Europe's trademark application, namely the public interested in financial and business services, the opposition was rejected.
Wondering if your trademark has a Brand Reputation within the Benelux or the European Union? Contact your trademark expert.