Defendants are producers, manufacturers and distributors of sorting machines and sorting systems incorporating laser-technology.
On 3 January 2007, the first defendant registered, on behalf of the second defendant, the domain name ‘www.bestlasersorter.com’. The content of the website hosted under that domain name is identical to that of the second defendant's usual websites, accessible under the domain names ‘www.visys.be’ and ‘www.visysglobal.be’.
On 4 April 2008 plaintiff applied for the Benelux figurative trade mark BEST for goods and services in Classes 7, 9, 40 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended.
On 23 April 2008 a court official established that, when the words ‘Best Laser Sorter’ were entered in the search engine ‘www.google.be’, the second search result to appear, directly after the plaintiff's website, was a link to the second defendant's website and that the latter used for its websites the following metatags: ‘Helius sorter, LS9000, Genius sorter, Best+Helius, Best+Genius, … Best nv’.
As it considered that the registration and use of the domain name ‘www.bestlasersorter.com’ and the use of those metadata infringed its trade mark and trade name and constituted infringements of the law concerning misleading and comparative advertising and the law concerning the unlawful registration of domain names, plaintiff brought, on 30 April 2008, proceedings against the defendants, seeking an order prohibiting those alleged infringements and offences. In response to those proceedings, the defendants lodged a counterclaim seeking annulment of the Benelux figurative mark BEST.
By judgment of 16 September 2008, the President of the Rechtbank van Koophandel te Antwerpen (Antwerp Commercial Court) (Belgium) declared unfounded the claims brought by the plaintiff other than the claim alleging a breach, by the use of the metatags in question, of the law on comparative and misleading advertising. He also dismissed the counterclaim brought by the defendants.
In an appeal brought by plaintiff and a cross-appeal by the defendants, the Hof van Beroep te Antwerpen (Antwerp Court of Appeal), by judgment of 21 December 2009, dismissed in their entirety the claims brought by the plaintiff, including the claim alleging a breach of the rules concerning misleading and comparative advertising, and cancelled the Benelux figurative mark BEST on the ground that it lacked distinctive character.
The plaintiff lodged an appeal on a point of law against that judgment before the referring court. By judgment of 8 December 2011, that court rejected the grounds of appeal raised by the plaintiff, with the exception of that alleging infringement of the provisions on comparative and misleading advertising.
In those circumstances, the Hof van Cassatie (Court of Cassation) decided to stay proceedings and to refer a question to the Court.