NEWS ADVERTISING LAW & INTELLECTUAL PROPERTY
THE NETHERLANDS
N0 3 |16
Stephanie Reinder Folmer joins Hoogenraad & Haak 1 Posting a hyperlink to illegal content: copyright infringement? 2 Children’s marketing: end of the blue tick 3 “Exicutive adveyser to Van Aaitsen” with style? 4 Minced meat of the MEXICANO shape mark 5 Bavaria / Your Hosting – Well. No copyright after all. 6 EU Court of Justice on procedural costs 7 B2B communication with claims? Beware! 8 Tackling IP infringement via the landlord of the market hall 9 Scares on YouTube 10 100% allergen-free? 11 Misleading claims on packaging: an update 12 Flavour optimisation is essential! 13
Stephanie Reinder Folmer joins Hoogenraad & Haak
In July 2016, our firm was bolstered by Stephanie Reinders Folmer joining us as a
legal assistant. She provides support to the lawyers of Hoogenraad & Haak for all
aspects of the practice. Stephanie obtained her bachelor’s
degree from the University of Utrecht and the University of
Warwick (UK). She then obtained a specialised master’s degree
in Information Law at the Institute for Information Law (IViR)
of the University of Amsterdam. Stephanie discovered her
passion for intellectual property law and advertising law at a
young age. She likes to get her teeth into a combination of
innovation, creativity and complex issues. During her studies,
Stephanie also worked at the ‘Clinic’, a legal advice centre specialising in privacy,
media, and intellectual property law. She did student internships at various law
firms specialised in IP and previously worked at Spotify.
2 N0 3 |16
Posting a hyperlink to illegal content: copyright infringement?
The great fun of the Internet is that it is so easy to link to another website. Any
restriction of that fun may violate fundamental rights such as the freedom of
expression and information. Yet can one place a hyperlink to a website that
contains copyright protected content – a film, a
photo, a text? That may collide with the copyright
owner’s fundamental right. Since Svensson we know
that it is OK to post a link to copyright protected
work published online with the rightholder’s
consent. That content is already available to any
Internet user, so the link does not reach a new
public. Yet can the rightholder stop the hyperlinker if the hyperlink refers to
content that was published without his permission? In the case GS Media/Britt
Dekker the CJEU finally shed its light. It must be assessed whether the hyperlinker
knew or ought to have known that the hyperlink he posted provides access to a
work illegally published. The CJEU expects from businesses (acting for profit) to
check in advance whether the rightholder duly consented with the linked
publication; from now on there is a (rebuttable) presumption of knowledge of the
protected nature of the work and of the possible lack of the rightholder’s consent.
However, as a general rule, people who don’t publish for profit will not know
whether the linked content was published with or without consent (or even don’t
know about the principle of protection at all). So they can post a link on Facebook
or Twitter to that nice movie or story. But in a clear case the rightholder may
substantiate why in this case the hyperlinker ought to have known that the linked
content is ‘illegal’. Then it may be deemed a copyright infringement after all.
This is quite something. How often are links to other websites posted? From now
on a business must check in advance, before posting a link, whether the linked
content is ‘legal’. The CJEU did not explain how such check may be executed in
practice, nor how broad ‘for profit’ must be interpreted. Yet it is clear that GS
Media should not have linked to the secret nude photos of Dutch celebrity Britt
Dekker on the file sharing site Filefactory. Britt started quite something.
Maarten Haak
3 N0 3 |16
What’s in a name? Goody Good Stuff
Are Goody Good Stuff sweets better or healthier than other sweets?
The website says that they contain only natural flavourings and
colourings. A complainant at the Advertising Code Committee (ACC)
thinks the name Goody Good Stuff is misleading: the sweets contain
just as much sugar as regular sweets. The President of the ACC made
short work of this: Goody Good Stuff is not a ‘claim’ within the
meaning of the Claims Regulation. Even if it were a health claim: the
ingredient statement on the website shows that the product is not
particularly healthy .... A favourable opinion from a swift President; this could
have not worked out so well for Goody Good Stuff.
Children’s marketing: end of the blue tick
After all the commotion about the ‘Blue tick’ (“conscious choice”), the ‘Green tick’s
little brother (“healthier choice”), the foundation ‘I Choose Conciously’ decided
that as of 1 August of this year the Blue tick is no longer permitted on ‘products
with children’s marketing’. So: no more colourful figures on
the packaging and in advertising for products bearing the
blue tick. It is one or the other: no further children’s
marketing elements in advertising for the product, or no
more Blue tick. The end of girl band K3, Sesame Street and
Tintin. And also the end of made up animation figures, and
use of the words child(ren)/kidzz/infant, etc. in the brand.
Why? Because those appeal to children, while products
bearing the Blue tick are not necessarily healthy. They are (merely) a relatively
conscious choice within the category of products at hand – such as snacks. Only
drawings of fruits and vegetables are still allowed, as long as they are not figures
with arms or legs. Currently existing products that combine a Blue tick and
children’s marketing may still be promoted until 31 July 2017. ‘Healthier choice’ +
a cheerful children’s-look & feel = from now on, a bad choice.
For a while at least: the foundation ‘I Choose Conciously’ has meanwhile
announced that it will bury the Blue tick altogether: only the truly healthy variant
of the Green tick will remain.
Ebba Hoogenraad
4 N0 3 |16
“Exicutive adveyser to Van Aaitsen” with style?
On 2 July 2016 the blog GeenStijl.nl posted the item Executive Adviser Van Aartsen films arrest. The film shows a woman on the street filming an arrest
and saying that she is “mayor Van Aartsen’s executive adviser”. GeenStijl posted
the following comment underneath: “Crikey. The police of The Hague finally arrest a white person, and coincidentally, once again, it’s an acquaintance of the executive adviser to Mayor Van Aartsen. Or as the woman puts it in her own fancy accent: “exicutive adveyser to Van Aaitsen”.” As it turns out, the
woman is not an adviser at all. The Municipality of The Hague
claimed a rectification of this incorrect fact in summary
proceedings.
The Preliminary Relief Judge of the District Court of Amsterdam dismissed the
claim. GeenStijl has a satirical character; a mocking tone is allowed. The case
touches on the current public debate about racism in the The Hague police force
after a number of incidents in The Hague. As a public body, the municipality has
to tolerate a lot in that respect. According to fixed case law, the header of a post
may be sensational to catch the reader’s attention. The municipality also gave its
response through a press release the same day. This press release was then
“retweeted” by GeenStijl and it soon became known that the item was (partly)
incorrect. Finally, GeenStijl made it impossible to post new comments on the news
item and the names of the directors concerned were removed, so that they would
not be bothered. Taking all this into account the right to freedom of expression
for GeenStijl in this case weighs greater than the interests of the Municipality in
protecting its reputation. No need for a rectification by GeenStijl. Don’t take
GeenStijl publications too seriously.
Marga Verwoert
5 N0 3 |16
Minced meat of the MEXICANO shape mark
Snack manufacturer De Vries has marketed the snack MEXICANO since 1984
(right). Both the name and the shape are registered as a Benelux mark for
snacks. Private label supplier Bakx makes and sells a similar snack in the
Benelux, the Brasero (see below left). Bakx also
supplies its snack to a French supermarket chain where
it is called MEXICANO ESCALERO. Infringement on its
(shape) mark rights, according to De Vries. The
Preliminary Relief Judge found it was not. At least, no
infringement of the shape mark. The reason? Insufficient similarity: the
shapes differ and the number (and the shape) of the ribs is different. The
Court did say that ‘every now and then it had to snatch a glimpse of the plates’ during the hearing to see the differences. That was still not enough to
assume likelihood of confusion though, because the
court did not find the shape of the MEXICANO
sufficiently distinctive for that. Whether the shape
mark has become descriptive remains undecided. It
also counts that there are many other products on the
market that give the same overall impression. The
preliminary relief judge sees nothing in the
descriptiveness claim. He “even allows himself a strong presumption that the exact shape of the snack will probably not at all interest the average snackbar owner nor the consumer who’s after a meaty type substance, and that certainly the latter in general will not ask himself who has produced the oblong, ribbed and recessed guilty pleasures”. But it is
not yet over for Bakx, because the word marks save De Vries. Bakx’
MEXICANO ESCALERO that is supplied from the Netherlands in France does
cause likelihood of confusion. This means the word mark MEXICANO remains
intact, because it is (sufficiently) distinctive for snacks. The judgment could
still be hard to digest.
Daan van Eek
6 N0 3 |16
Bavaria / Your Hosting – Well. No copyright after all.
Bavaria has come away empty handed again, in its appeal in the case against Your
Hosting. Other than the preliminary relief judge, the Appeals Court of The Hague
found that Bavaria’s well known slogan from 1985 “Well, first a Bavaria” is not
copyright protected. The preliminary relief judge had found that it did not matter
that the legendary slogan was formulated in
everyday Dutch. You can also be creative with
everyday Dutch, and (the advertising agency) of
Bavaria had done precisely that, meaning that the
slogan is copyright protected – according to the
court. That judgment has now been dismissed.
The Appeals Court found that the slogan is a plain, common sentence in the Dutch
language; a usual combination of words. The sentence “Well, first a Bavaria” must
be considered by itself, and then the curtain comes down on copyright protection.
The actual words “Well, first a Bavaria” do not exhibit any personal stamp of the
creator. The Appeals Court: “A (mainly) auditory pause after “So” makes no difference. A possible witticism, which according to Bavaria is found in that ‘something’ is completed and then something ‘different’ is done does not alter that. It remains, after all, (whether or not droll as far as the content is concerned) an ordinary, common phrase in the Dutch language”.
Droll - what a wonderful word. The Appeals Court clarified its judgment by
pointing out that a good slogan is not necessarily copyright protected. A slogan
that is pithy and catchy does not mean that that slogan reaches the threshold.
The threshold for copyright protection in the Netherlands is low, but Well., not
that low.
Daniël Haije
7 N0 3 |16
EU Court of Justice on procedural costs
What costs are reimbursed when proceedings are won? Article 14 of the European
Enforcement Directive obliges Member States to provide for reimbursement of
‘the reasonable and proportionate legal costs and other expenses for the winner in
IP proceedings. Implementing this rule, Article 1019h of the Dutch
Code of Civil Procedure stipulates that the full costs of the winning
party in an intellectual property dispute are reimbursed. These costs
often run up to tens of thousands of euros. At the same time, the
reimbursement is often moderated by Dutch courts: the costs must
be fair and proportionate. To promote legal certainty and to make
it easier for parties to estimate the financial risk, the Dutch
judiciary has published a directive with ‘indicative rates’. These give
an indication of the maximum amount that is generally considered reasonable
and proportionate. These rates can be derogated from by judges. The indicative
rates do not apply in patent litigation. In Belgium, the arrangement for the
reasonable and proportionate costs is laid down in the law very differently. In
general, fixed (flat-rate) rates are used but these are usually much lower than the
actual costs. The Belgian Appeals Court of Antwerp asked the EU Court of Justice
in the case United Video Properties/Telenet to decide whether Article 14 of the
Enforcement Directive allows for a (national) scheme with a flat-rate system. The
EU Court of Justice ruled that it does, as long as the judge takes into account the
specific characteristics of a case. And as long as the rates ensure that at least a
significant and appropriate proportion of the reasonable costs of the winner are
borne by the losing party. The result of this judgment may be that the Dutch court
will deviate from the indicative rates less hastily.
The Court of Justice also ruled that the costs of a technical adviser (such as a
patent attorney) must be reimbursed. This reimbursement should not be limited to
cases where the losing party was at fault. If the costs are directly and closely
linked to an intellectual property claim, they should be reimbursed. With or
without fault.
Moïra Truijens and Stephanie Reinders Folmer
8 N0 3 |16
B2B communication with claims? Beware!
The recent Court of Justice ruling Innova Vital gives us another (future) classic:
the strict rules in the Claims Regulation are also applicable to commercial
communication from food businesses to healthcare professionals. This means: B2B
communication. That is a huge problem for businesses, because until now
thoughts on this were very different in the
Netherlands (and in a lot of other Member States).
It was assumed that communication involving
(health) claims towards a physician or other
professional in the field of public health does not
fall under the scope of the Claims Regulation. See,
for example, the Guideline Document to the Claims
Regulation by the KOAG/KAG. Communication that
is ultimately intended to reach the consumer (such as brochures) already fell
within the scope of the Claims Regulation. In this judgment the Court takes it a
step further: The Claims Regulation is not about whether the communication is
intended for the consumer, but whether the product is intended for the consumer.
The reason for this? Healthcare professionals do not continuously have specific
and up-to-date knowledge in order to check every claim for accuracy. Healthcare
professionals can also be misled, meaning they run the risk of giving incorrect
information to the consumer.
Does this mean the door is closed entirely? No: obviously objective information
about scientific developments may be given to healthcare professionals. However,
‘jargon’ must be used and the communication may not be commercial.
The decision does not explicitly mention whether all this applies one on one to
professionals who do not work in healthcare. B2B communication to the
distributor for example. This remains an open question. We are going to be
hearing and writing a lot more about this. That much is certain!
Sarah Arayess
9 N0 3 |16
Tackling IP infringement via the landlord of the market hall
The EU Court of Justice ruled in Tommy Hilfiger/Delta Center that trademark
owners can force the landlord of a market hall to avoid a repeat of a trademark
infringement. Some major brands wanted to prevent Delta Center in a Prague
market hall from subletting stalls to ever-changing
traders in counterfeit products. Every time a trademark
owner would take action the subtenant would suddenly
disappear. The next day he would be back again, or
some other subtenant with more or less the same
stock. That is why the trademark owners decided to sue
the landlord this time: must he actively cooperate in
order to prevent new infringements after an obvious
infringement has taken place? The answer is: yes. In 2011 it was already decided
that eBay, as an online marketplace, can be ordered to take measures to prevent
new infringements of the same nature. Tommy Hilfiger/Delta Center now shows
that this also applies in the offline world. Appropriate measures may be imposed
on a case-by-case basis. They must be effective and dissuasive, and also fair and
proportionate. A measure should not be overly costly for the intermediary, and
should not create barriers to legitimate trade.
After L’Oréal/eBay it was assumed that the intermediary can be ordered to not
only prevent similar new infringements by the same users, but also those of other users. The case of the Prague market stall shows that it really only applies to new
infringements by the same market vendor. There is no general and permanent
surveillance duty; that would be too big of a burden. No mega-victory for
trademark owners in the end.
Maarten Haak
10 N0 3 |16
Scares on YouTube
YouTube can be fantastic for advertisers. Based on the profile data of the YouTube
viewers you can decide which advertisements to present to them. A great way to
target your audience. That was what McDonald’s thought, when it launched a
creepy commercial on YouTube: ominous film music, an
abandoned country house, a woman who got the fright of her
life when confronted with the ghostly figure of a young girl.
And then: time for a McBreak! Can you see it coming?
McDonald’s and its advertising agency had clearly given the
instructions: only show this horror commercial to YouTube
users aged 13 or older. However, an 11-year-old still got to see
the video. Result: she was scared to sleep with the lights off
for days on end. And: a complaining mother at the Advertising
Code Authority (ACC).
How was this possible? Targeting on YouTube is associated with a profile, but you
do not have to log in with your own profile to watch videos. That means an 11-
year-old can see scary commercials by watching them on her parents’ tablet. If
she is not logged in at all, YouTube adapts the content to previous viewing habits,
but no clear age limits apply.
Does this mean the commercial is in conflict with the Advertising Code due to
violation of good taste and decency (terrifying children)? The RCC does indeed
think this commercial is too scary and therefore unsuitable for young children. If
children see the videos using the profile of an adult, there is not much that can be
done to prevent it. However this is a different story for users without a profile.
Therefore the ruling: if the advertiser shows the scary commercial to viewers
without a profile, the commercial is in violation of good taste and decency.
That is pretty strict, because McDonald’s did try to reach the right target group.
But as this ruling shows whom you deliberately target is not decisive. This implies
major consequences for all YouTube videos for products where an age limit
applies , such as foods (12 years), ‘healthy’ foods (7 years) and alcohol (18 years).
It is important to take your actual audience into account! It is a shame that no
appeal was filed.
Bram Duivenvoorde and Ebba Hoogenraad
11 N0 3 |16
100% allergen-free?
Allergen-free, what does that actually mean? That was what crossed the minds of
the complainants when they saw the claims (100%) allergen-free tomato and vegetable soup and allergen-free meat on the internet. The
complainants took this case to the Advertising Code Authority
(RCC): because what if you are allergic to meat? Or the herbs such
as garlic and pepper that are processed in the soups? That can
also go wrong.
The advertisers defended themselves by stating that their products
are free from allergens that must be declared: Annex II of the EU
regulation No 1169/2011 on the provision of food information to
consumers contains a list of 14 allergens that must be declared
including the widely known; gluten, shellfish, milk and nuts. But
can you call a product (100%) allergen-free only when the
product is free from the allergens that must be declared?
The RCC does not believe so. The RCC ruled in both cases that the claim (100%) allergen-free is misleading. The claim raises the expectation that the products
contain no allergens at all, while the claim only refers to the list of allergens that
must be declared. Consumers who must or who wish to avoid allergens could be
misled in their decision to purchase these products. They will not expect that the
product contains other allergens than the 14 obligatory ones.
The RCC draws a clear line: the expression (100%) allergen-free may only be used
if no allergens have been used at all. An interesting follow-up question is whether
this claim can be made at all; is there not always at least someone allergic to a
product?
Stephanie Reinders Folmer
12 N0 3 |16
Misleading claims on packaging: an update
Almost a year after the Teekanne judgment a Dutch version followed: Heks’nkaas.
The NVWA was of the opinion that the name Heks’nkaas suggests that the
product is “a type of cheese” and is therefore misleading with regard to the
composition of the product. The District Court of
Rotterdam refers to Teekanne but concludes that
the packaging is not misleading at all. The list of
ingredients is clear. The product contains cream
cheese, but is not actually a type of cheese
itself. Also the rest of the labelling cannot be
considered to be misleading.
And then it gets interesting. If the packaging had said “dip spread of cream cheese and fresh herbs” it would possibly have been misleading, according to the District
judge. In that case, the consumer might think that the product consists of cheese
(almost) entirely . This shows that an insignificant word can make a world of
difference. But: don’t forget to check the rest of the packaging as Teekanne
prescribes.
A similar ruling by the Board of Appeal of the Advertising Code Authority (“BoA”)
was given on the claim “100% Xylitol” for chewing gum. That claim was printed
several times on the packaging, but was not entirely accurate. The product
actually contained 99.7% xylitol, but also a tiny bit of (0.1%) aspartame and
acesulfame K. The ACC thought this was misleading, even though the ingredient
list is accurate and clear. The claims on the packaging may remove the incentive
for consumers to check the ingredients list. This is particularly dangerous as some
groups can be allergic to aspartame.
The BoA agrees with the ACC. The claim has a very absolute scope, which makes it
unsuitable for further nuancing. Once again it appears that 100% allows for no
exceptions.
Take home message? The exact wording of claims on packaging requires great
precision. But also the rest of the packaging and the list of ingredients must be
taken into account.
Sarah Arayess
13 N0 3 |16
Flavour optimisation is essential!
In the Albert Heijn TV commercial for bread with the ‘Broodnodig’ label, baker
Patrick proudly proclaims that his fresh bread contains only the essentials. The
complainant is angry because he has discovered on the label that the multigrain
bread also contains dextrose, and that is not essential. Well…. Albert Heijn could prove that
the brown rolls in the TV commercial actually only
contain flour, water, yeast and salt, and no
dextrose; the labels are somewhat behind the
innovations in the baking and production process.
But what about white bread and “Tijger” (mottled
crust) topping? Albert Heijn explains that no
equivalent alternative has yet been found for dextrose in white bread. The
Advertising Code Authority is on board with this. Flavour optimisation is no reason
to assume deception says the ACC. Taste panels show that the public actually
finds that the dextrose is desperately needed here. Good to see that the RCC
believes that taste is an essential value.
Ebba Hoogenraad
14 N0 3 |16
Hoogenraad & Haak, advertising + IP advocaten is an independent boutique law
firm in the Netherlands, recommended by inter alia Chambers, Legal 500 and Best
Lawyers. We are specialists in advertising; intellectual property; health, beauty &
food; media & entertainment; reputation management. We litigate and advise in
complex matters, often with a cross border aspect. We think along with legal
profundity and with human understanding. Allow us to present a creative solution
at an early stage (how can it be done?).
This quarterly NEWS contains general information and does not provide a full
review of the topics covered. If you have any questions on a particular subject, we
recommend that you seek specific legal advice. You have our permission to forward
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distributing the NEWS. © Hoogenraad & Haak, advertising + IP advocaten 2015.
Editor: Maarten Haak
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