IPPZ is a company that develops software for health care
professionals. This software enables health care providers and
patients to communicate more easily with one another. Users include
health centres, hospitals, psychologists, therapists, general
practitioners and physiotherapists. IPPZ offers this software under
the name of its subsidiary 'Karify' and owns several EUTMs
including the word mark 'KARIFY'.
IPPZ uses this mark (inter alia) in the following way:
The Defendant, Cariphy, develops and markets software for health
care and health club professionals and sells this software under
the trade mark 'CARIPHY'. This software enables
physiotherapists, health club owners and personal trainers to
instruct and assist their patients/clients and to manage agendas
and training schedules. Cariphy is the owner of the EUTM word mark
'CARIPHY' (EUTM) and uses this mark (inter alia) in the
In proceedings before the The Hague District Court, Karify
claimed that the use of 'CARIPHY' as a trade mark for
software infringed IPPZ's trade mark rights and trade name
rights. Cariphy, on the other hand, claimed there is no likelihood
of confusion because the trade marks of Cariphy are used for a
different product and this product is not aimed at the same public,
namely consumers and professionals outside the health care
industry, instead of consumers and professionals in the health care
The court considered that both marks are very similar in a
conceptual and aural way. The elements 'Kar' and
'Car' both refer to the word 'Healthcare'. The
argument put forward by Cariphy that the relevant public is not
likely to distinguish such element was dismissed by the court. The
fact that both marks are visually less similar was not enough to
overcome the other similarities of the marks. Furthermore, both
marks cover software and both products are very similar. Both
software solutions are aimed at the same users (physiotherapists)
and have the same function (to help health-care professionals
improve individual supervision of their clients/patients).
The court therefore concluded that the use of the brand CARIPHY
causes a likelihood of confusion and Cariphy therefore infringed
the trade marks of Karify under article 9 (2) (b) of the European
Trade Mark Regulation.
It is noteworthy that the court applied an international
approach when assessing the aural similarities. The court
considered that both marks are to be pronounced in the English way
(like the word 'terrify', only starting with sound of the
letter 'k'). Holders of EUTM word marks containing English
words or references to English words should therefore take into
account that the Dutch (Benelux) public perfectly understands
English and that the English language can be used as a basis to
assess a possible EUTM infringement in the Netherlands.
Lucas de Groot
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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