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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
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Yvonne Onomor
No First Aid for Dutch EHBO in Summary Proceedings

The Royal Dutch first medical aid association called EHBO ('Eerste Hulp Bij Ongelukken' - first aid in case of accidents), a national association with a network of sub-associations in the Netherlands, lost trade mark infringement summary proceedings today before the Presiding Judge of the District Court in The Hague (P.G.J. de Heij) against MF Medical & Safety B.V, a company based in Axel (Zeeuws-Vlaanderen, The Netherlands), a wholesaler of first aid materials. Till April, 2008 MF Medical had apparently sold first aid materials to which the logo on the left was attached. EHBO had registered this logo as a trademark in the Benelux on November 22, 2007, but the logo is used since EHBO's foundation in 1893. The sub-associations are entitled to use the logo and some of them had ordered materials from MF Medical to which the logo was attached on commission by these sub-associations. With a cease and desist letter of April 14, 2008, served to MF Medical by a bailiff, MF Medical was summoned to stop the use of the trade mark immediately and to sign a settlement agreement. MF Medical stopped deliveries to the sub-associations, but refused to sign the agreement, arguing that it committed no trade mark infringement. In the summary proceedings that followed with a writ of summons of September 23, 2008 by EHBO MF Medical put up two lines of defences.

First of all MF Medical argued that the Presiding Judge had no jurisdiction to decide this case and claimed that the case should be referred to the President of the District Court Middelburg. Because EHBO's trade mark was not registered before November 22, 2007, MF Medical's alleged infringing deliveries pre-dating the registration, amongst others to the sub-association in The Hague, could not be held to be trade mark infringements. Due to the lack of any illegal activities in the district of the District Court in The Hague the Presiding Judge had no jurisdiction to deal with this matter. EHBO countered with the argument that the content of the writ of summons is decisive for establishing jurisdiction. The Presiding Judge agreed with EHBO's argument and added that the principle it reflected should be applied irrespective of the validity from a factual point of view of the thesis in the writ of summons (I dare to disagree with this view if it is clear - directly or without extensive investigation - that the relevant thesis is or are wrong - GvR). Accordingly the Presiding Judge found jurisdiction to deal with the case in art. 4.6 of the Benelux Convention on Intellectual Property (BCIP), assigning jurisdiction for alleged infringements on Benelux trade mark rights at the court(s) in the Benelux where the harmful event occurs.

Jurisdiction is not enough however to rule in favour of EHBO in the end: MF Medical successfully argued - to be short - that EHBO missed an urgency-demanding interest to deal with this matter in summary proceedings. The Presiding Judge finds that EHBO already in November 2007 knew about MF Medical's alleged infringing activities and also at the time of registering the trade mark in December 2007 without taking legal action against MF Medical. From this starting point the Presiding Judge can not understand - while a proper explanation from EHBO is not given at all - EHBO's declaration that she has become aware of MF Medical's activities only recently. The Presiding Judge furthermore takes into account MF Medical's statement at the hearing - which was not disputed by EHBO - that the alleged infringing activities were stopped after receiving the cease and desist letter in April 2008. A ground for the Presiding Judge to hold that at the time of summary proceedings no infringements took place and that such infringements were not likely in the future.

An important point is that the Presiding Judge finds that the sole refusal of MF Medical to sign EHBO's settlement agreement is not enough - in this particular situation - to assume a urgency-demanding interest that is needed to obtain injunctions in summary proceedings. The Presiding Judge establishes that MF Medical had good grounds for the refusal to sign the settlement agreement. MF Medical refused to sign this agreement because she defends that there isn't a trade mark infringement and furthermore she disagreed with the content of the agreement. Thus the Presiding Judge comes to the conclusion that EHBO misses an urgency-demanding interest with the result that she is found inadmissible in its claims.

Result: EHBO should pay MF Medical's costs of the proceedings. The Presiding Judge makes short work of EHBO's defence that MF Medical has provoked the summary proceedings without a good cause. Relevant is that EHBO wants to act against deliveries from MF Medical predating the date of the trade mark registration: these deliveries can not be found to infringing, because they predate EHBO's trade mark registration. EHBO's statement that this use of the trade mark is tortuous is found to be contrary to art. 2.19 par. 1 BTIP, which article reflects the principle that there can be no trade mark protection without a registration (except for famous trade marks). Because a tort as a basis for the action was not reflected in the cease and desist letter and in the settlement agreement, MF Medical's refusal to refrain from signing the agreement were valid. Furthermore EHBO seemed not prepared to proper consultation with MF Medical on the matter, although MF Medical explicitly invited EHBO to such consultation. Apparently EHBO was only prepared to moderate the agreement in such a way that the cease and desist declaration laid down in the agreement would be restricted to the goods and services for which the trade mark is registered.

Therefore EHBO is ordered to pay the cost of MF Medical. EHBO's defence that these costs should be restricted while a part of the proceedings related to a tort and not to a trade mark infringement was overruled, but the Presiding Judge follows the lines of the scale of liquidated costs applicable for first instance trade mark infringement cases in the Netherland since August 1, 2008. The real costs (€ 10,208.60) are limited to the liquidated amount for an easy case: € 6,000 minus the costs of the jurisdictional issue (€ 585).

Posted by: Gino Van Roeyen @ 14.31
Tags: Benelux case law, EHBO, inadmissable action, Jurisdiction, procedure, tort, trade mark infringement, trade mark registration,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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