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

our NEWS to anyone who is interested. A free e-mail subscription can be obtained

through www.hoogenhaak.nl/newsletter. Personal data are solely used for

distributing the NEWS. © Hoogenraad & Haak, advertising + IP advocaten 2015.

Editor: Maarten Haak

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