Did you know that you that use of a trademark is essential to maintain exclusive rights?
The little tale of a tiny hamburger giving a decennium long stomachache
Benelux hamburger aficionadas have been sobbing for years now…. Indeed a Dutch snack bar has been preventing the US company Quality Is Our Recipe LLC, to open one or more of its famous Wendy’s hamburger restaurants for almost 25 years. In 1988 the Dutch citizen Mr. Raymond Warrens opened a snack bar in the town Goes which he named after his daughter Wendy. On 16 February 1995 he decided to file “Wendy’s” as a word mark in the Benelux for “snack products” and “restaurant services” and obtained trademark protection. From then on, Mr. Warrens has been giving the US multinational indigestion that won’t go away.
Well in fact, they only have themselves to blame. Indeed, in the 80’s they had 6 restaurants in the Benelux and owned corresponding Benelux trademark registrations for “Wendy’s”. They however closed those restaurants, but maintained their trademark registrations. When Mr. Warrens filed his Benelux trademark they immediately reacted by sending a cease & desist letter claiming that the application was filed in bad faith because Mr. Warrens should have been aware of the chain of restaurants since the restaurants were well known, even famous. They failed however to prove the claimed well-known character. As a consequence they failed to prevent Mr. Warren from obtaining protection for his trademark, as the latter succeeded in canceling those rights due to lack of use on the Benelux market.
In order to maintain trademark rights and to be able to enforce them against third parties it is essential to use your trademark for the goods and/or services it covers. In many countries the owner of a trademark must be able to prove use once the mark has been registered for 5 years. Since Quality Is Our Recipe LLC was not able to prove such use their trademarks were cancelled. Hence Mr. Warrens now holds the oldest trademark rights over the name “Wendy’s”.
Ever since Quality Is Our Recipe regained interest in opening new restaurants in the Benelux they tried – unsuccessfully we must add - to cancel the trademark of Mr. Warrens. Their claim that Mr. Warrens had not sufficiently used its mark with only one snack bar in the Benelux was dismissed by the court. As it stands and even with EU trademark registrations for “Wendy’s” in portfolio Quality is Our Recipe is still blocked from using such marks on the Benelux market, as Mr. Warren could object such use at any time.
This case is a perfect example of the fact that even the smallest trademark owner can create a real and long lasting stomachache… Before filing a trademark any applicant should go through a well thought out process and strategy, in order not to be faced with non-use issues afterwards. The same can be said for owners of marks not currently in use- before sending out a cease and desist letter, make sure your marks are, themselves, not vulnerable to cancellation.
Mr. Warrens has paid better attention to this thus keeping the oldest rights over the Wendy’s name in the Benelux and preventing Benelux consumers from testing if the hamburgers of the US multinational are indeed the result of a Quality Recipe.
Jens DE MAERE