ANWB owns a registered clothing trademark HUMANATURE. A cease-and-desist letter from ANWB is not enough to prompt Canada Goose (producing high-end winter jackets) to stop selling HUMAN NATURE outdoor clothing. However, Canada Goose replies that the brand will be “phased out”. So instead of initiating preliminary injunction proceedings, ANWB presses ahead. 

ANWB starts proceedings on the merits before the District Court of The Hague, claiming damages or a surrender of profits by Canada Goose. Canada Goose attempts to delay the proceedings: it files a cancellation action with BOIP against ANWB’s Benelux trademark. Will the District Court stay the case until BOIP has ruled on validity? This is how it works in proceedings on the merits regarding EU trademarks: the proceedings are suspended as long as a cancellation action is pending at the EUIPO in Alicante (and on appeal before the Board of Appeal, then the General Court, and possibly the Court of Justice), which can take a very long time. This delaying tactic is also known as the “Alicante torpedo.” 

Canada Goose comes up short. Unlike with EU trademarks, there is no legal requirement for Benelux trademark proceedings on the merits to be suspended until a final ruling on validity is issued. The proceedings regarding ANWB’s Benelux trademark will continue while the cancellation proceedings are pending at BOIP. This allows the parties to obtain a judicial ruling sooner and enables the trademark owner to claim damages more quickly.

This ruling demonstrates why it can be strategically wise to register a Benelux trademark in addition to an EU trademark. A liability proceeding, in particular, can provide an additional lever to pressure the defendant (in this case, Canada Goose) into reaching a settlement. A Benelux trademark can therefore be more than just a backup copy of the EU trademark.