WE LEGAL vs. WE LOVE LEGAL: why the court decided to ‘let it be’
Imagine: you’ve set up a legal network under the name WE LEGAL NETWORK. Your name is registered as a word mark, you’ve been operating for years, and then suddenly a competitor turns up calling itself WE LOVE LEGAL – complete with a heart in the logo. Confusing? WE LEGAL NETWORK certainly thought so, and took the matter to court. But the judge saw things very differently.
A trademark that is barely a trademark
The problem starts with the name itself. ‘Legal’ literally says what your business is about: legal services. So it’s descriptive. And ‘we’? That’s simply “we” – exactly what you’d expect from a network of lawyers. In other words: the word mark ‘WE LEGAL’ was pretty weak from the start. It describes what you do, and that is precisely what a trademark should not do in order to be distinctive.
The fact that there is no verb in between (between ‘We’ and ‘Legal’)? That argument doesn’t save it either. Newspaper headlines often omit verbs too, and that doesn’t make those headlines unique creations. So the combination ‘WE LEGAL’ remains, above all: descriptive.
Five years on: a bit stronger, but not enough
WE LEGAL NETWORK argued that the brand had since gained recognition. There is a podcast, the founder writes a column, the brand is involved in an award, and it works for renowned clients. A fine CV, the judge effectively said, but not enough. The descriptive nature has not disappeared as a result.
And what about that little heart?
Here it becomes almost amusing. The judge refers to the iconic ‘I ❤ NY’ campaign from 1977. Since then, everyone has understood that a little heart stands for ‘love’. So WE ❤ LEGAL is simply read as “we love legal” – with the verb (‘love’) right there in plain sight. And it is precisely that verb ‘love’ that ensures the two names are clearly distinct from one another. In short: no risk of confusion and no trademark infringement.
Trade name law offers no salvation either
The judge in the interim relief proceedings refers to the well-known Supreme Court ruling concerning the older internet domain name “Dairy Partners” versus the younger “DOC Dairy Partners”, which won: how descriptive is the name, what do the businesses look like, how are they actually used (think of the look and feel), and – crucially – is there actually any confusion in practice? The answer: no.
Anyone who chooses descriptive words as a trade name must accept that others may also use virtually the same words. That is the need for availability: you cannot simply monopolise everyday language. Only if your name becomes a household name through years of intensive use – think of Thuisbezorgd.nl or Booking.com – might the situation be different. WE LEGAL does not (yet) fall into that category.
The outcome
The claims are dismissed. WE LOVE LEGAL may continue to use both its name and its logo. And as if that weren’t painful enough: WE LEGAL NETWORK must also pay €8,124 in legal costs. But that simply follows from the special legal costs scheme applied by the courts in summary proceedings of this type (IP Indicative Rates).
The lesson for practice
If you choose a name that describes what you do, you get both the advantages (recognisability, findability) and the disadvantages (little legal protection) in one package. Anyone who wants a strong brand must create something that does not immediately explain what the company does. And anyone who litigates on the basis of a weak brand runs the risk of taking both the case and the bill home with them.
Questions?
Do you have any questions regarding this article? Please contact one of our solicitors via email, by telephone or fill in the contact form for a no-obligation initial consultation. We’d be happy to help!
