In a judgment of 26 June 2018, the Brussels Court of Appeal held that, by using its trade name "Sport Direct" and its website sportdirect.com for Belgian customers, Sport Direct BV ("Sport Direct") was causing damage to the Belgian company Sportsdirect.com Belgium NV ("Sportsdirect.com").
The dispute arose between Sportsdirect.com, the Belgian division of an international group operating shops in Europe selling, inter alia, sports and outdoor apparel, and Sport Direct, a Dutch company offering similar goods for sale to consumers in Belgium and Luxembourg. Sportsdirect.com has 45 shops in Belgium, 37 of which operate under the trade name "Sportsdirect.com", and also sells its goods via its websites "sportsdirect.be" and " and also sells its goods via its websites "sportsdirect.be" and "Sportsdirect.com". Sport Direct, for its part, does not operate bricks-and-mortar stores. Instead, it sells its goods via its website "sportdirect.com", to which all its other domain names (including "sportdirect.be", " "sportdirect.be", "sportdirect.nl", " "sportdirect.be", "sportdirect.nl", "sportdirect.eu", etc.) are redirected.
In 2016, Sportsdirect.com brought an action before the President of the Commercial Court of Leuven and argued that Sport Direct was infringing Articles VI.98, 1° and VI.104 of the Belgian Code of Economic Law ("CEL"), which prohibit misleading trade practices and unfair trade practices. In particular, Sportsdirect.com sought a cease-and-desist order against Sport Direct, both as regards the use of its trade name and the use of its website. The Leuven Commercial Court partly sided with which prohibit misleading trade practices and unfair trade practices. In particular, Sportsdirect.com sought a cease-and-desist order against Sport Direct, both as regards the use of its trade name and the use of its website. The Leuven Commercial Court partly sided with Sportsdirect.com and ordered Sport Direct to cease using its trade name. However, contrary to what which prohibit misleading trade practices and unfair trade practices. In particular, Sportsdirect.com sought a cease-and-desist order against Sport Direct, both as regards the use of its trade name and the use of its website. The Leuven Commercial Court partly sided with Sportsdirect.com and ordered Sport Direct to cease using its trade name. However, contrary to what Sportsdirect.com had claimed, the Leuven Commercial Court refused to prevent Sport Direct from selling its goods via its website " which prohibit misleading trade practices and unfair trade practices. In particular, Sportsdirect.com sought a cease-and-desist order against Sport Direct, both as regards the use of its trade name and the use of its website. The Leuven Commercial Court partly sided with Sportsdirect.com and ordered Sport Direct to cease using its trade name. However, contrary to what Sportsdirect.com had claimed, the Leuven Commercial Court refused to prevent Sport Direct from selling its goods via its website "sportdirect.com" in Belgium. Both parties appealed the judgment to the Brussels Court of Appeal (the "Court").
In its judgment, the Court first examined whether the trade name "Sportsdirect.com" has a distinctive character and is therefore eligible for protection. In this respect, it held that the combination of the two words "sports" and "direct" was not descriptive of Sportsdirect.com's activities. Moreover, the Court underlined that, while it was true that the distinctive character of "Sportsdirect" was initially weak, it had increased over the years following the intensive use of that trade name since 30 June 2006, when Sportsdirect.com's first bricks-and-mortar store had opened. The Court further noted that, since 30 June 2006, Sportsdirect.com had opened numerous other stores throughout Belgium.
Both parties claimed the "first use" of their own trade name. Sportsdirect.com referred to the opening of its first shop on 30 June 2006 under the name "Both parties claimed the "first use" of their own trade name. Sportsdirect.com referred to the opening of its first shop on 30 June 2006 under the name "Sportsdirect.com" and Sport Direct referred to the registration date of its domain names in 1997, 1999, 2004 and 2006 and the accessibility of these domain names in Belgium since 2006, to the distribution of catalogues in Belgium since 2007 and to the date of sales of its goods on the Belgian market. The Court underlined that the evidence brought forward by Both parties claimed the "first use" of their own trade name. Sportsdirect.com referred to the opening of its first shop on 30 June 2006 under the name "sportsdirect.com" and Sport Direct referred to the registration date of its domain names in 1997, 1999, 2004 and 2006 and the accessibility of these domain names in Belgium since 2006, to the distribution of catalogues in Belgium since 2007 and to the date of sales of its goods on the Belgian market. The Court underlined that the evidence brought forward by Sportsdirect.com was convincing and fully proved the public, visible and continuous use of its trade name "Sportsdirect.com" in Belgium since 30 June 2006. By contrast, the Court held that Sport Direct had not proven its claim, especially since the proof of registration of a domain name does not necessarily entail a visible, continuous and public use of a trade name in Belgium. The Court therefore sided with public, visible and continuous use of its trade name "sportsdirect.com" in Belgium since 30 June 2006. By contrast, the Court held that Sport Direct had not proven its claim, especially since the proof of registration of a domain name does not necessarily entail a visible, continuous and public use of a trade name in Belgium. The Court therefore sided with Sportsdirect.com and held that that party rightfully claimed the first visible, public and continuous use of its trade name "Sportsdirect.com".
The Court then examined whether Sport Direct's use of its trade name "sportdirect.com" constituted a misleading trade practice under Article VI.98, 1° of the CEL. The Court held that this was the case as both trade names were almost visually and aurally identical and were both used for similar, if not identical, goods. For the same reasons, the Court also found an infringement of Article VI.104 of the CEL, which prohibits unfair trade practices.
Finally, the Court held that Sport Direct's behaviour could unduly draw consumers away from Sportsdirect.com and cause a loss of turnover and, therefore, damage to behaviour could unduly draw consumers away from Sportsdirect.com and cause a loss of turnover and, therefore, damage to Sportsdirect.com. The Court therefore confirmed the judgment at first instance and, in addition, granted Sportsdirect.com's request to order Sport Direct to make its website inaccessible to visitors with a Belgian IP-address.
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