A tale of two bunnies

You occasionally come across the strangest conflicts among the judgements of trademark cases. This particular conflict concerns the logo of a cute little bunny that a company called Bunnyjuice submitted to the European Union for use on both clothing and adult products, namely sex toys. What looks at first sight to be just a sweet little bunny is actually rather a naughty one.

Another sweet little bunny you may have heard of is called Miffy, and Mercis, owner of the Miffy trademark, filed an opposition. Various versions of Miffy have been registered as a figurative trademark for products including clothing, and if you compare these figurative trademarks to the contested logo, you can quite understand why Mercis is none too pleased with the Bunnyjuice rabbit. The European Trademarks Office agreed in this case and granted the opposition for the identical products, i.e. clothing, for which the trademarks in question had been registered.

But Bunnyjuice also wanted to register their bunny trademark for sex toys, products for which the Miffy trademark is not registered. In its opposition to the registration of this logo, Mercis pointed to the fame of the Miffy logo. A famous brand has a broader scope of protection and can therefore take action against similar trademarks that have not been submitted for similar products and services if the similar trademark is detrimental to the famous brand or is trying to profit from its reputation.

But once again, providing proof of your trademark’s fame was a difficult hurdle to clear. Mercis submitted diverse evidence and referred to the many awards won by Dick Bruna, but all to no avail as the European Trademarks Office did not see any evidence which demonstrated that the logo was well-known among the target group for the products the brand was seeking to register. Proof that demonstrates fame is fundamentally different to proof that a trademark is in use. When providing proof of a brand’s fame, the emphasis lies, for example, on market research demonstrating that the intended consumer will immediately recognise the trademark. Unfortunately for Mercis, the opposition was rejected on this point.