Famous people have a current popularity. In order to prevent third parties from using their name many famous people register their name, and sometimes their portrait, as a trademark. Should companies use the image of the famous person for their advertising the person receives a royalty. This is nog more than logical, yet it does not always go well. The reason for this is that everyone is able to register a personal name as a trademark in the Benelux, even if it is someone else’s name. Whoever comes first has the best rights. This is how the problem with ROY DONDERS arose.
Since 2012 Roy Donders has become more and more famous, thanks to various TV shows. In November of 2013 a marketing agency registers the trademark ROY DONDERS for clothing in the Benelux. After this trademark was registered the firm contacted Roy Donders and proposed to work together. At the time Donders was busy with a marketing campaign for a supermarket. This campaign involved a type of clothing for the Soccer World Cup. It soon came to a conflict. The marketing agency claimed that it registered the trademark ROY DONDERS. It ordered Jumbo (the supermarket Roy Donders was working with) to cease all use of the trademark ROY DONDERS. A court procedure followed.
The court judged that the registration was unlawful, despite the fact that there are no specific rules for personal names. Roy Donders had, after all, been active under his name for quite some time, most notably with regards to clothing. In the Benelux it is not allowed to register a name as a trademark if you know that someone else is already using it. The marketing agency had obviously been acting in bad faith since they knew of Roy Donders’ existence. The consequences of all this was that the trademark registration was cancelled and the real Roy Donders was free to register his name as a trademark. Fortunately this case was in line with previous case law on such matters and demonstrates that hijacking someone’s name, despite a lack of legislation, is not a profitable activity in the Benelux.
