A Belgian insurance company launched a reward programme for safe drivers under the name DVV OsCar and filed a semi-figurative trade mark including that denomination. It used the title “And the OsCar goes to…” in some online advertising too. The Academy of Motion Picture Arts and Sciences, owning earlier trade mark rights in the Benelux and European union on the word Oscar, complained about the registration and use made by the insurance company.
The Academy based its action mainly on the fact that the insurance company was using the mark without due cause, took unfair advantage of, or was detrimental to, the distinctive character or the repute of the earlier reputed Oscar mark as well as unfair commercial practices.
The insurance company replied saying among other things that the Oscar mark should be declared invalid since it was not genuinely used for more than five years in relation to services in class 41 (entertainment, annual award ceremony) in the Benelux and European union by the Academy.
The Court declared that the Oscar mark was validly and sufficiently used since the ceremony award is broadcast annually in over 200 countries, there is a Best Foreign Language Film award for which several films coming from the Netherlands, Belgium, Germany, Italy and France took part in the competition and the local newspapers broadly reported about the Oscars ceremony. Further, it declared the mark was reputed due to the intensity, geographical scope and duration of its use as well as the investment made for the promotion of it and the percentage of recognition among the relevant public. There is a risk of dilution due to the high reputation of the Oscar mark should the Academy not react against such infringing use in the course of trade. The infringement of the Academy’s trade mark rights also implies that the condemned behaviour constitutes an unfair commercial practice.