Again a new tool for the trademark owner who is contronted with a trademark infringement. Last summer the Court of Justice produced its famous mark owner friendly judgment in l'Oréal/Bellure. Well known marks can act much easier against followers who intend to profit from the good repute and image of the trademark. This often enables the owner to stop the use of lists containing a comparison between the 'real' product and the less costly equivalent. FM Group - a distributor of cheaper odours - had been ordered by the Dutch Court to stop the use of such too obvious comparison lists. However, when the judgment was given it remained unclear who was responsible for spreading these lists. This time the trademark owner Coty had done its homework. In new injunction proceedings it persuaded the summary proceedings judge that FM Group is in fact responsible for spreading these lists on the internet. The judge rendered a far going order: FM Group must now request all of its distributors for a written cease statement promising that they will no longer refer to the lists on the internet. Whoever does not sign the statement will see its distribution agreement terminated. And Coty will exactly see who signs and who does not. So Coty will be able to send cease and desist letters to each individual distributor who refuses as well. In fact FM Group is forced to make its distributors choose: sign and accept, or end of the story. This is not a temporary measure (for which interlocutory proceedings were meant) but a more permanent order. The possibilities for a Benelux or Community Trademark owner in summary proceedings in the Netherlands have multiplied again.
Maarten Haak, trademark lawyer
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office Emerald House Jozef Israëlskade 48-G Amsterdam, the Netherlands t +31 (0)20 - 305 3066 www.hoogenhaak.nl |
post PO Box 76780 1070 KB Amsterdam e info@hoogenhaak.nl f +31 (0)20 - 305 3069 chamber of commerce 34314579 |
Again a new tool for the trademark owner who is contronted with a trademark infringement. Last summer the Court of Justice produced its famous mark owner friendly judgment in l'Oréal/Bellure. Well known marks can act much easier against followers who intend to profit from the good repute and image of the trademark. This often enables the owner to stop the use of lists containing a comparison between the 'real' product and the less costly equivalent. FM Group - a distributor of cheaper odours - had been ordered by the Dutch Court to stop the use of such too obvious comparison lists. However, when the judgment was given it remained unclear who was responsible for spreading these lists. This time the trademark owner Coty had done its homework. In new injunction proceedings it persuaded the summary proceedings judge that FM Group is in fact responsible for spreading these lists on the internet. The judge rendered a far going order: FM Group must now request all of its distributors for a written cease statement promising that they will no longer refer to the lists on the internet. Whoever does not sign the statement will see its distribution agreement terminated. And Coty will exactly see who signs and who does not. So Coty will be able to send cease and desist letters to each individual distributor who refuses as well. In fact FM Group is forced to make its distributors choose: sign and accept, or end of the story. This is not a temporary measure (for which interlocutory proceedings were meant) but a more permanent order. The possibilities for a Benelux or Community Trademark owner in summary proceedings in the Netherlands have multiplied again.
Maarten Haak, trademark lawyer