Action may not be taken against this sort of use in every case. The Act sets threshold conditions: the mark must be one which has a reputation, and the use must without due cause take unfair advantage of or be detrimental to the distinctive character or the reputation of the mark. There is therefore no need for the goods on which the second mark is used to be in direct competition with the registered mark. The proprietor’s sales do not even have to be damaged.

Due to the first use in the Netherlands in March 1952 and the filing of three deposits with the Benelux Trademark Office at the Hague as provided for by the Benelux Trademark Law on 17 and 21 December 1971, the Lucas Bols Co is the owner of the mark ‘Claeryn’ and of the same word written in a specific typographical style as well as of the same word as the central motif of a label for the product, Holland gin. Due to the very intensive and widespread use of this mark for 21 years, the Lucas Bols Co attained great notoriety and ‘goodwill’ in the Netherlands for the product which it sold under this mark, namely a young genever. This notoriety is particularly based on the fine quality of the product sold under this mark and on the extensive advertising which includes television, radio, and the press. The Lucas Bols Co found out that Colgate had selected the mark ‘Klarein’ to designate a cleanser, a so-called ‘all-purpose cleanser’ consisting of liquid soap which is to be marketed in bottles, and that Colgate intended to market the cleanser in the Netherlands under the mark ‘Klarein’ and to advertise this publicly through the media in the weeks following the commencement of this proceeding. The mark ‘Klarein’ chosen by Colgate shows a certain typographical similarity to the mark ‘Claeryn’ of Lucas Bols and the former term is phonetically completely identical with the latter. The Lucas Bols Co requested Colgate in writing not to start using the term ‘KIarein’. Colgate’s answer indicated, however, that it did not intend to comply with the request of Lucas Bols.