Uitspraken

[A] heeft na dit gesprek op 22 januari 2016 aan [C] een e-mail gestuurd waarin is opgenomen:

“Thanks for the opportunity to explain for the colleague you mentioned, the changes we want to introduce in our branding hierarchy.

* Right now we carry two brands, MKB Brandstof (our main brand) and Tom de Ridder (our advertising character). In the market, Tom de Ridder has a stronger brand awareness than MKB Brandstof, after many years of radio advertising.

* Furthermore, MKB Brandstof is a descriptive name. This puts limits on our emotional brand values -plus the description is no longer valid:

* Therefore we want to change our name. There we face the problem that a rebranding campaign does not bring in new customers. Our margins are so slim that we can not afford such a paid campaign.

* Hence we will change our name to Tom. The moment we do this, we will tell the press that Tom de Ridder will no longer be heard on radio. This will bring us the free publicity we need to transfer the brand awareness from Tom de Ridder to Tom (the shorthand version that has been in use for years as well).

* Opposed to MKB Brandstof, the new Tom will revolve around pull marketing, sympathy, social media and sponsoring. Our paid advertising will be limited and no longer be product focused (except for search engine marketing). It will put the spotlight on our community of 45.000 entrepreneurs, and encourage them to support each other.

* The product delivery of Tom (billing & collections) will remain MKB Brandstof branded, at least for now: Tom by MKB Brandstof.

Although the transition to Tom is not a big step, we like to eliminate upfront any chance confusion with the TomTom brand. Given the brand values and associations, that chance is not big either - but we feel it is necessary to make explicit together how we can place Tom at maximum distance from TomTom (logo, colours, typography, slogans, etc.). We are prepared to commit ourselves to guidelines that protect your brand from possible confusion. Would it be possible to plan a meeting with your colleague, to discuss possible guidelines?”

Op 19 februari 2016 mailt de assistente van [B] , [D] (hierna: [D] ), aan [A] :

“We would like to invite you for a call to discuss MKB Brandstof’s wish to undertake a name change.”

Op 23 februari 2016 mailt [A] aan TomTom:

“Since we did not have your input yet, for now we made clear to the agency that they have to stay far away from your colour scheme and typography. Next to the logo, our new visual identity will be strongly determined by great pictures of our actual customers. In this way, the name ‘Tom’ will be transformed from the advertising character it is today, into a metaphor for an entrepreneur. Whenever you hear the name ‘Tom’ you will think of an entrepreneur - that ‘s the goal of our new brand hierarchy.”

Op 25 februari 2016 heeft [A] telefonisch een gesprek gevoerd met [B] , welk gesprek hij heeft opgenomen. Tijdens het gesprek is -onder meer- het

volgende gezegd:

“[B] : You are looking to uhm rebrand your ... your ... your company, as I understand it?

[A] : Yes.

[B] : And ... uhm ... you ... you want to make use of the name Tom.

[A] : Yes, that is correct, yeah.

[B] : Okay. Uhm, can you explain to me, I’m a bit, I’m a bit confused ‘cause I have looked at some of the stuff that you’re doing and around your fuel [... ? ...] and stuff like that and that to my mind sits uncomfortably close with a number of initiatives that ... that we have. Uhm, so I’m just ... uhm, where, why Tom? Uhm, do you have some history with this name? What ... what’s the ... what’s the connection?

[A] : Yes. Well, I’ve ... I’ve ... uhm ... uhm ... I have explained that in my uhm, e-mail uhm, to uhm [C] and ... I understood he, he forwarded this email to you, and two days ago, I ...

[B] : Uhm ... yeah, we ‘ve ... was that in Dutch?

[A] : No, it was in, in English.

[B] : In English, okay no, I am uhm I’m sorry, I haven ‘t uhm picked up on that.

(...)

[B] : Perhaps you can explain.

[A] : Yeah, sure. Uhm ... Uhm, we are using, uhm, the name Tom uhmfor a few years now and we, we ‘ve also registered uhm ... Tom de Ridder as a, as a brand name. Tom de Ridder is our uhm- Tom the Knight, in English, hahaha, but, but in Dutch it’s Tom de Ridder- uhm and he is our uhm ... advertising uhm ... character, for a few years now in a, in a massive uhm, radio campaign in the Netherlands.

(...)

And ... uhm ... we, we want to maintain, uhm, the brand awareness of uhm, of Tom. Uhm, but we want to, to change our brand values: we will become a social enterprise. Uhm ... right now we are uhm, uhm product oriented: uhm, our product is a payment card .. uhm ... for the gasoline ... uhm, market ...

(...)

... uhm specifically aimed at small entrepreneurs.

(...)

... and uhm ... Tom de Ridder is now, uhm, ja known as as the advertising character that tries to force you to, to buy this uhm payment card And. .. uhm ... we will become a social enterprise that is a, a facilitator of, of, of a community of 50.000 uhm entrepreneurs, uhm, that are our customer right now. And uhm, we, we hope to enable this community to, to, to strengthen each other as, as an entrepreneur ... Uhm ... where as our, our services in, in uhm ... in the payment, uhm ... with, with the payment card, yeah, will become more of a, a side activity almost, huh.

(...)

So it is quite a, a, a big change in uhm empha ... emphasis where, where uhm ... the brand positioning is uhm involved.

[B] : Oh okay ... So what you are actually going to be doing under the Tom brand? You say uhm, uhm, uhm ... can you, can you [ .. ? ... see if ... ? ... eaches out and ... ? …]. Uhm ... how are you reaching them, I mean, are you selling them things? Are you ...

[A] : Yeah we have a payment relationship with them because we uhm, process their uhm, their transactions on gasoline and ... carwash and ... parking: both parking in the streets ... as uhm parking in, uhm, garages. Uhm ... and in the future uhm, we will, uhm … possibly extend this to uhm, uhm, the, the ... how do I say it, uhm ... to, to electricity for ....

(...) [A] : Oh, okay, well ... electricity for uhm, electric vehicles, so car charging and .. uhm ... as, as a big innovation for in like, like two or three years, we would like to ... uhm, process also payments in uhm ... restaurants, uhm - another important area where, where the small entrepreneur has a lot of sales slips that he wants to get, get rid of. Because that’s, that ‘s the core of our, our uhm ... value proposition: that is that you can throw away all the sale slips and get one monthly income statement.

[B] : Yeah, I understand, I understand. Okay well, on the sign-up side of it, I don ‘t really have a problem but what has anything to do ... with for example ... elec ... electric cars and, and things like that, that’s where I uhm I become extremely uncomfortable. Uhm, we haven’t seen any example of, of uhm ... logo’s that you were talking about ... uhm is, is that sornething you are able to share with us?

[A] : Yeah, absolutely, but uhm ... we are starting, uhm, the design process right now. One week ago, our ...

(...)

[B] : But, uhm ja, I mean, as I think uhm [C] [ [C] ; hof] probably indicated to you, anything to do with the name Tom I, I get very uhm ... uhm, my, my uhm, the, the hairs on the back of my head stand up. Uhm ...

(...) A : So it’s really making sure that what you are doing doesn’t touch on anything that we are doing ...

(...)

[B] : .... or we are going to do, but also that your uhm, your brand doesn ‘t look like and would never be confused with anything ...

[A] : Absolutely.

(...)

[A] : Yeah. That’s why I, that’s why I contacted uhm [C] [ [C] ; hof]. Uhm ... he, he, he, he didn’t tell me about your, uhm, your worries though, yet ...

[B] : Ja. I, I mean uhm, it, uhm ... I can understand what you are doing, and, and why you are doing it, uhm and, and to me, it’s just making sure that you look, you know, completely different. But if you are moving away from uhm this…

[A] : I agree.

(...)

[B] : (…) I understand that. Uhm, but, but one of the things that I picked up, (...) there is an awful lot of uhm, uhm, uhm, negativity around the, the Tom the Rider uhm brand which, uhm, I’m surprised that, that, that... Perhaps ... you, you, you did a néw venture and you want to follow through that. But obviously that is the branding thing you need to think about. I need to see what is it you want to do with this, uhm, logo.

(...)

[B] : Uhm, because if, if I’m comfortable enough ... If they can make it look like something that is só far away from what we do, then, then I can be comfortable, but I would want ...

(... )

[B] : uhm, uhm, a, a, an Agreement between us that you wouldn’t extent the, ehm, ehm, into ehm anything that, that, that we do, and ...

(...)

[B] : ... we often do this, we ...

(...)

[B] : ... call this a Coexistence Agreement, to ...

(...)

[B] : ... make sure that ... you don ‘t uhm suddenly start doing anything that, that is more auto ... automotive based.

(...)

[A] : ... and you would help ús if uhm, not only you can give uhm feed, feedback on the logo designs we will create the coming weeks ...

(...)

[B] : Ja, I understand. And, and, and thank you for, for approaching it uhm in that way. I think what we need to do is ... We, we need to start seeing some ideas, uhm, and then when we can find something that we all are happy with, and, you know, you, you’re happy about, and we can live with, then we will draw up an agreement.

[A] : Sure, nice. Yeah! Alright.

(...)

[A] : Right. Yeah. And, the, the thing is, [B], it’s, it’s good to know that we, we have been the biggest radio advertiser, uhm, for, for uhm many months in, in the past few years. So we’ve made a lót of radio advertising with Tom de Ridder and uhm, the last three years I think, maybe four years, uhm, we, we started to use the abbreviation uhm to uhm Tom because everybody knew Tom de Ridder, so we could start to, to call him uhm Tom, and I ...

(...)

[A] : … have never ever really encountered somebody who had an association with TomTom. Because our Tom is not a device or a service but it’s a, it’s a ...

(...)

[A] : ... it’s a person, you know. It’s, it’s ...

[B] : You, you, you appreciate, you do appreciate that you are not […autonomous?...]. TomTom is, is, uhm, is active in a lot of are as, you know ...

[A] : Yeah.

[B] : ... it’s not that we ‘re talking about navigation devices, we’re active in an awful lot of areas.

[A] : Alright. Yeah.

(...)

[B] : So I just have to keep a weather eye. It’s very important to me ...

(...)

[B] :: ... that, uhm, you, you’re going to go ahead and, and we can find uhm a logo that, that, uhm, doesn’t, uhm, cause any problems this end.

[A] : Yeah.

[B] : We are willing to [...work?...] on a Cooperation Agreement and, and that will... limit anybody from coming info any of the are as that, that we are ... that we operate in.

[A] : Alright. Ja. Okay.

[B] : So that everybody knows where they stand up from, so that, that, that’s a good thing.

(...)

[B] : Okay, alright then, well I look forward to uhm receiving uhm some uhm ideas from you and your logo and uhm, and then see if we can sort this out very quickly.

[A] : Yeah. And could you, uhm, please provide me with, you know, some, some brand manual or whatever, some description of what the TomTom brand is, in, in all its visual appearances?

[B] : Well if, if you uhm just send your, your agency come to our website, they should be able to pick that up.

(...)”

In een overgelegde verklaring van 22 november 2016 licht [B] toe hoe ze het telefoongesprek van 25 februari 2016 had begrepen:

“(...) Mr. [A] and I spoke on the telephone to discuss what Mr. [A] was wanting to do with his Tom de Ridder brand. I have understood that with the proposed company rebranding, Mr. [A] wanted to change the use of brands within his company, and that more specifically he wanted change the “Tom de Ridder” into a more “grown-up” version which trademark logo sign would be used to distinguish the existing offering of gasoline payment services in the framework of a new marketing strategy. (...)”

Op 29 maart 2016, met een rappel op 1 april 2016, stuurt [A] per e-mail de kleuren van het Tom-logo en schrijfwijze van het woord Tom in het logo. In de email staat, voor zover hier van belang, het volgende:

“We are still aiming at May 20th as the date for the go-live of our new branding hierarchy. Since time is running fast, I think it is wise to start working on the ‘agreement to coexist’ you proposed. Could you please send me a draft version with your ideas?”

Op 14 april 2016 heeft [A] een e-mail aan [B] gestuurd waarin -onder meer- is vermeld:

“Please find attached our intended logo. (...) If you would have final remarks, could you please inform me as soon as possible?

[D] heeft op 15 april 2016 (16:58u) per e-mail gereageerd en -onder meer- gemeld:

“(...) [B] [ [B] ; hof] has actually received the re-worked logo and we managed to reviewed it together this morning. Unfortunately, we cannot approve it, as we are concerned that the lower case “m” and “o” resemble the font of our TomTom logo too much. In addition, the dot next to the word Tom is also in a green color that is similar to our own.

Please let us know when changes can be made to address these concerns. Once the design and color scheme of the Tom logo have been agreed on, we will send you our proposed coexistence agreement.

(...)”

[A] heeft vervolgens op 15 april 2016 (18:38u) aan [D] -onder meer- gemaild:

“(...)

We will come back to your remarks after your clarifying response, but something else for now: I am worried about the fact that you do not inform us yet on your ideas on the ‘agreement to coexist’ you proposed. You mentioned earlier that you would start working on it and ensure that it was ready by the time [B] [ [B] ; hof] would be back. I have informed you that we are aiming at May 20th as the date for the go-live of our new branding hierarchy. Time is running so fast; could you please share your ideas now already, so that together we can finish the agreement soon, in order to enable us within reason to manage your input towards our go-live date?”

Op 18 april 2016 heeft [A] [D] een e-mail gestuurd waarin -onder meer- is opgenomen:

“(...) We have really stretched ourselves to create a unique visual identity that would never be confused with yours. Given the careful approach we chose, your response last Friday to be honest puzzles us:

(...)

Having said that, I truly hope that your biggest concern has been with regard to the color lime-green we used for the dot behind “Tom”. (...) Please find our new logo attached.

Finally, I would like to underline that the name Tom has been used by us for many years now. And we honestly are not aware of any instance of confusion with TomTom.

Moreover, our Tom is known as a person - in the media even depicted as a ‘Bekende Nederlander’ (celebrity) - and TomTom is known as a physical device and navigation service. Both brands already reside in different mind spaces. Confusion is hard to create.

(...)

This message has been specifically designed not to launch a new brand name, but to eliminate the MKB Brandstof brand name in order to make room for the well known Tom and stretch what we have been doing with his name for the past few years already. We do not claim a new mind space but ‘clean up’ our own, existing mind space by taking away MKB Brandstof. In this way, we not only achieve our goal of not losing brand awareness. At the same time, we manage the risk of confusion with your brand to zero.

I am prepared to present this entire campaign to you, but this might not be necessary once you know that in the final radiocommercial of Tom de Ridder, he will:

These will be his famous last words, “Het is tijd voor een nieuwe Tom. “And from that moment on, we will not use the name “MKB Brandstof’ but Tom for our company- and never use the voice and name of Tom de Ridder again. With this clever campaign we ensure that the existing awareness of Tom is being stretched out to the new future of our company.

Our company, brand image and logo will thus be very different from yours. (...)

Having said all this, I really hope you will give us your agreement on the attached logo we developed.

(...)”

In haar reactie heeft [D] op 18 april 2016 -onder meer- het volgende gemaild:

“(...) Secondly, we have no issue sharing the co-existence agreement draft with you. We did not want to do this simply because we would not sign an agreement before the above trademark-related concerns have been cleared up. Please find attached the draft that we have prepared for your initial review.

Thirdly, we will try to help you meet your timelines but please understand that protecting TomTom’s position is the key priority for us. You need to create a logo that is not similar to TomTom’s - stylistically and in color. (...) For the avoidance of any doubt, here is what the TomTom logo looks like:

(...)

Unfortunately, we do consider that it resembles the logo that you are suggesting very closely.

(...)

Bij de e-mail van 18 april 2016 is een concept co-existence agreement gevoegd waarin voor zover relevant het volgende staat:

“(...)

Whereas

ii) TomTom is a market leader in the field of personal navigation devices (“PNDs’’), sports watches, map making and traffic services, thus being one of Europe ‘s most prominent and well-known brands in the marketplace;

iii) “Company” is involved in the business of «Business description» and wishes to change its name and start using the «Trademark» to promote its business in the «Industry description» sector/s;

iv) «Trademark» (partially) contains the well-known TOMTOM mark, which may lead to confusion amongst consumers as to the origin of the offered products and services;

Na een e-mailwisseling over de wijzigingen in het ontwerp van het logo van MKBO en een bespreking op 21 april 2016 waarbij [A] logo ontwerpen aan [B] heeft getoond, heeft [A] op 24 april 2016 aan [B] -onder meer- het volgende gemaild:

“Hi [B] , this is our final proposal for your approval; it is in line with my previous e-mail. (...) Could you please give me your go-ahead?”

Op 25 april 2016 heeft [B] per e-mail -onder meer- als volgt gereageerd:

“I agree this one is better, and is more of what I had been expecting. Provided it always appears as per this attachment, it should not cause a problem. (...) We just need to agree the co-existence agreement and we are done.”

[A] heeft op 18 mei 2016 [D] -onder meer- gemaild:

“You are aware of our commitment not to extend into your areas, but it has not been mentioned before that your idea would be that we do not register Tom as a trademark. This makes us unnecessarily attackable by other parties; which in turn would reduce the value of our company significantly. Moreover, wouldn’t the proposed wording of Clause 4 make Clause 1 superfluous?

A possible drawback of Clause 5 is that a new TomTom trademark application could ingnite the confusion we both wish to avoid. I know this is not your intention, but how could we tackle this drawback in the wording?”

Op 22 mei 2016 heeft [D] [A] per e-mail - onder meer- gemeld:

“We understand your concerns. However, from our perspective removing clause 1 and allowing you registration rights can weaken our own position as the owner of the well-known TomTom trademark. This is not acceptable for us. Further, at the moment it is still not clear to us what your plans are which makes it difficult to consider a compromise solution - perhaps you can explain to us where you wish to register and in what classes?

Clauses 4 and 5 are both complementary to clause 1 and each of them adds specific safeguards to our pre-existing rights as trademark owners. (...)

Clause 5 is crucial for TomTom. We must fully eliminate the possibility of being challenged in relation to our future or present trademark applications. We cannot agree to any modifications of this clause. (...) “

[A] antwoordt op 24 mei 2016:

“(...) we do not wish to expand abroad. Hence, we would like to register the logo and brandname in just our fine little country. My commercial manager picked the following classes. (...) In addition it is good to mention that we foresee that our logo might become visible in Belgium, Luxembourg and/or Germany.

(...)”

[D] heeft op 1 juni 2016 -onder meer- aan [A] , gemaild:

“Unfortunately, having considered your responses, we cannot make any concessions with regards to clause 1 of the draft co-existence agreement. (…) We would like to remind you that we have agreed to enter into a co-existence agreement on the understanding that MKB Brandstof will not register the Tom trademark. At no point during our initial negotiations did you inform us of your wish to register the Tom trademark. You have only raised this after we had agreed to the use of the proposed design of the Tom logo.

While we appreciate that you are concerned about your position vis-à-vis competitors, as a compromise, we suggest that you use the TM symbol at the end of the Tom logo (…) to be clear we will oppose any application for formal registration of your Tom logo, as to allow it would come with a high risk devaluing the TomTom brand (...)”

[A] heeft op 1 juni 2016- onder meer- als volgt gereageerd:

“Thanks again. I should have looked at your draft agreement before we met that day in your office- but since I did not, your demand in the document not to register Tom came as a surprise to me when I studied the draft.

As you know we are under pressure; we are going to switch to Tom in the next few days. Let’s try to finalise this compromise now.

We now accept Clause 1 but please can you add to our feeling of safety? You will appreciate that it is uncomfortable for us to operate under a name that is not protected. We would really like to be in the position to discuss this again with you in three years time. Would you allow us to add the following to Clause 1:

“However, the Parties agree that they will reconsider this provision three years after signing this agreement.”

This would give us at least a chance to get protection in the future for something that for now remains unprotected.

(...)

Furthermore, we have the following suggestions for alterations of the document you send me:

MKB Ondernemers heeft op 2 juni 2016 een persbericht doen uitgaan waarin in de aanhef is opgenomen:

“Definitief afscheid van reclamepersoonlijkheid Tom de Ridder

Tom nieuwe naam van MKB Brandstof”

[D] heeft op 3 juni 2016 aan [A] een door [B] namens TomTom ondertekend exemplaar van de Co-existence Agreement gemaild en daarbij - onder meer - het volgende opgemerkt:

“(…) To be clear, we did not insert any of your suggested amendments, except for the ones that relate to the use of the TM symbol and the depiction of the Tom logo, not least because they are not in accordance with the terms we are prepared to offer.

(...)

While we have no interest in being confused with your brand either, you will appreciate that we are not the party that has to make this promise. We have pre-existing rights as the owner of a globally recognized brand.

That being said, we have made some further changes to clauses I and 2, and have inserted a new additional clause under number 6, please take notice of these.

We have, in good faith, spent a considerable amount of time helping you to be able to use your logo as you intended without causing TomTom harm. We have now reached the point of no further compromise or concessions.

Attached is the final document. Please sign and return a copy to me if you intend to proceed with your proposed “Tom” logo.

Co-existence agreement

Between

Hereinafter also referred to as the ‘Parties’,

Whereas

ii) TomTom is a market leader in the field of personal navigation devices (“PNDs’’), sports watches, map making and traffic services, thus being one of Europe ‘s most prominent and well-known brands in the marketplace;

iii) MKB Brandstof involved in the business of delivery, invoicing and payment of mobility transactions like gasoline, carwash, parking and e-charging by means of payment cards and smartphone apps and wishes to start using the Tom logo (as shown and described in Annex I) to promote its business in the buying, billing and payment services sector/s;

iv) The Tom logo consists of part of the well-known TOMTOM mark, which may lead to confusion amongst consumers as to the origin of the offered products and services;

Agreement

Annex I

All uses of the Tom logo shall reflect the design below. There shall be no deviation from the original colors and proportions depicted in this design.

MKB Brandstof is free to add the TM symbol next to the Tom logo to show that the logo is being used as a trademark.

Op 4 juni 2016 heeft [A] de Overeenkomst namens MKBO ondertekend en deze op 5 juni 2016 aan TomTom c.s. retour gezonden. Daarbij merkt hij het volgende op:

“(...) Thank you for explaining your position; we understand and appreciate it.

Please find our signed document attached in return. (...)

• Regarding the change of Clause 1 we did not see before:

Begin juni 2016 heeft MKBO in radiocommercials de wijziging naar Tom aan het publiek bekend gemaakt. De scripts van die radiocommercials luiden als volgt.

Tom de Ridder 1:

Tom! Ja? Begin maar. Oké. Hi, niet schrikken hoor. Maar ik ben het, Tom! Weet je nog: tanken, carwash en parkeren ... Juist, Tom de Ridder, van MKB Brandstof. De tijden zijn veranderd, en ook hoe we ondernemen. Daarom gaat MKB Brandstof veranderen. Verbeteren! Met nieuwe ambities, en nóg meer gemak voor ondernemers. Maar daarover hoor je volgende week meer. Het is tijd voor iets nieuws. Het is tijd voor een nieuwe Tom.

Tom de Ridder 2:

MKB Brandstof gaat dan wel veranderen, maar wat natuurlijk blijft is tanken, carwash en parkeren! Fiscusproof op één verzamelfactuur. En vanaf volgende week met nieuwe ambities, en nóg meer gemak voor ondernemers. Het is tijd voor een nieuwe Tom.

Een week na het uitzenden van de commercials Tom de Ridder 1 en Tom de Ridder 2 werden de volgende radiocommercials uitgezonden.

Tom radiocommercial 1:

Of je nou vroeg met je mannen onderweg bent om huizen mooier te maken. Of ‘s avonds bij mensen thuiskomt, om ze te helpen bij alle verzekeringen. Wat voor ondernemer jij ook bent. Je zet je eigen stip aan de horizon. Een idee, een ideaal, een ambitie om die dichterbij te halen is MKB brandstof veranderd in Tom.

Maak kennis op Tom.nl

Tom beweegt ondernemers.

Tom radiocommercial 2:

Voor alle ondernemers is er nu Tom. Je kent Tom van de autopas met de handige apps. Voor tanken, carwash en parkeren. Fiscusproof op één verzamelfactuur. Maar Tom deelt ook inspirerende ervaringen van mede-ondernemers met je. En geeft gratis advies bij al je fiscale vragen rondom mobiliteit.

Tom beweegt ondernemers.

[B] heeft op 22 juni 2016 aan [A] -onder meer- per e-mail het volgende bericht:

“(...) Based on your response from Friday June 10 2016 I understand that there are actually two radio commercials which are currently being broadcasted. Having listened to these commercials, I was concerned to note the pervasive use of the word “Tom” and the slogan “Tom moves entrepreneurs”. Further, I have reviewed your website and was surprised and disappointed to notice that you have completely rebranded MKB Brandstof’s business and are now trading under the name “Tom”.

During the negotiation process, you have explained to me that you intended to use the name “Tom” for a character that was previously known as “Tom de Ridder”. It was never clearly communicated to us that you intend to change your company’s name to “Tom” and fully rebrand your business under this name. To the contrary, we were told numerous times that the “Tom” logo will remain MKB Brandstof branded. Your failure to inform us that you would like to be able to use the word “Tom” as part of your commercial name has mislead us as to the nature of your intended uses for the “Tom” logo.

TomTom has solely agreed to permit the use of the “Tom” logo on the condition that MKB Brandstof uses only the approved design of that same logo and remains from using the word “Tom” in any other style or font in the course of its business. (...)

If TomTom does not receive your written confirmation that you will comply with the terms of the coexistence agreement within 7 days of this letter, you will leave us with no alternative but to terminate the co-existence agreement for breach. In which circumstance any further use of the Tom word or logo would amount to an infringement. TomTom reserves all of its rights and remedies in relation to this matter.”

De advocaat van TomTom heeft bij brief van 21 september 2016 namens TomTom de Overeenkomst met onmiddellijke ingang beëindigd en daarbij -onder meer- aan MKBO het volgende bericht:

“(...) my client has established that your client is still using “Tom” outside the agreed logo form (...). These acts of breach of the Agreement have already caused significant damage to my client, for which damage my client holds your company fully liable.

My client therefore hereby terminates the co-existence agreement as executed between parties with immediate effect and this letter serves as official notification thereof. This termination is primarily based on article 6 of the Agreement and -if necessary- also based on rescission (ontbinding) based on fundamental breach of contract.(...)”