Experience

Defending a wholesale international trade pharmaceutical products company in a high-profile case before the Court of the Hague about infringement of Union trademarks. The proceedings are part of a broader, international dispute between parties, which raises questions about the interaction of foreign and Dutch law. The judgement is published here.

Representing an international wholesale company in A-brand consumer goods in proceedings before the Supreme Court. Read the Supreme Court’s judgement here.

Representing our client in a case before the Court of Appeal of The Hague concerning unauthorised parallel trade in brand whiskey (Jack Daniel’s). The grounds for appeal were, first, whether a company which was dissolved in 2007, is admissible and entitled to a claim and, second, what amounts of damages or profit remittance was owned to the trademark owner. In an interlocutory judgment, the Court set aside the first instance judgment and ordered the dissolved company to repay the damages received in first instance.

Defending one of Europe’s largest forwarding and logistics companies in proceedings before the Court of The Hague concerning the legal position of a logistics service provider in trademark law. The case raises new and challenging questions that potentially have a huge impact on the development of intellectual property law. The case is still pending, but an interlocutory judgment was published in July 2022.

Representing a Rotterdam based company offering harbour tours in a trademark dispute against a competitor that used the company’s trademark as a Google AdWord. In preliminary relief proceedings, the judge found that the conduct detracted from the origin function of the trademark and ordered the competitor to cease and desist any further infringement. Read the judgment here.

Representing an international wholesale company in A-brand consumer goods in proceedings against a seizure of its original Heets products by tobacco manufacturer Philip Morris. The Court of Appeal of The Hague applied the doctrine as developed by the Court of Justice of the EU in the case Class International (18 October 2005, in case C-405/03), by stating that a trademark owner cannot successfully object against the sale and temporary storage of branded goods in transit in the EU/EEA, unless evidence is shown that the goods will necessarily be put in the EU/EEA market. Read the judgment here.

Defending a UK based wholesale company of fast moving consumer goods in litigation proceedings (in appeal of the interim proceedings and in the main proceedings) concerning the seizure of Durex-products by the trademark proprietor in the ports of Spain and the Netherlands, while the goods are goods in transit and not put into circulation in the EU. The cases are still pending.

Representing our client in a principal trademark and unfair competition dispute against a telecommunication provider regarding the vital and material question whether a colour can be monopolized and successfully enforced based on trademark law. 

Acting as referring counsel in appeal proceedings in Germany for the Dutch manufacturer of innovative industrial machine parts in a dispute against its former distributor with regard to trademark infringement and slavish imitation by the former distributor. The case is still pending.

Acting as defense counsel of one of Europe’s largest forwarding and logistics companies in two ongoing trademark cases against two liquor brands (Hennessy and Bacardi). Which could have significant ramifications for the forwarding industry. Both cases involve highly complex questions of IP law regarding the liability of intermediaries with regard to possible trademark infringements by third party-traders. Both matters are pending before the Court of The Hague.

Negotiating and drafting a distribution agreement for a manufacturer of innovative food products, that are exclusively sold in the leisure branch, for the distribution of the products in foreign territory.

Defending the world’s largest parallel trading group of companies in complex cross-border trademark proceedings against a pharmaceutical company. The main proceedings are still pending before the Court of The Hague.

Acting as counsel for claimant WijKopenAuto’s B.V., in the cancellation proceeding against the trademark ‘IK WIL VAN MIJN AUTO AF’ (‘I want to get rid of my car’) of the competitor Dealerdirect B.V. The trademark has been declared invalid by the Benelux Office for the Intellectual Property (the BOIP). The BOIP ruled that the trademark is merely a common advertisement phrase and therefore lacks any distinctive character. Dealerdirect has appealed this decision. Currently, the appeal proceedings before the Benelux Court of Justice are still pending. 

Acting as defense counsel for a trading company in litigation before the Court of The Hague in a matter touching the heart of trademark law and the free movement of goods. The case was settled amicably between the parties. 

Successfully represented Belgica de Weerd B.V. – a well-known Dutch producer and wholesaler of medicines and food products for professional racing pigeons – in cancellation proceedings before the European Office for the Intellectual Property (the EUIPO) after a conflicting trademark was filed in bad faith by a former business partner. Read the judgement here.

Successfully represented an international wholesale trade pharmaceutical products company as plaintiff in summary proceedings before the Appeal Court of Leeuwarden. On appeal it was successfully argued that the executive bailiff had not acted within the boundaries of the interim judge’s leave and that the first instance interim judge had wrongly granted access to the seized information. Consequently, the Appeal Court ordered the defendants in appeal not to use any of its falsely gained information. The judgment is published here (ELI:NL:GHARL:2019:293).

Initiated appeal proceedings before the Court of Appeal of Arnhem-Leeuwarden on behalf of WijKopenAuto’s B.V. against the provisional judgment of the interim judge of the Court of Overijssel in a trademark law case involving a descriptive trademark of the opposite party. The arguments of WijKopenAuto’s B.V. in first instance were later confirmed by the decision of the Benelux Office for the Intellectual Property (see under ‘June 2019’).  Currently, the appeal proceedings are still pending.

Acted as respondent to the cassation lawyer in Supreme Court litigation following the appeal proceedings over copyright infringement on the design of mooncake packaging. In first instance, the court refuted the copyright infringement claims; this was partly overturned by the appeal court’s decision. On 12 October 2018 the advocate-general rendered its opinion to the Supreme Court.

Acted as defence counsel for Orifarm A/S in summary proceedings concerning the alleged infringement of Allergan, INC’s second medical use claims for its Botox patent. The claims were refuted and Allergan did not appeal the decision.

Provided strategic advice to a Rotterdam based real estate company for inter alia hospitality services in one of its centrally located, iconic, office and residential buildings on its filing and Trademark Prosecution portfolio. 

Acted as counsel for a claimant of copyright infringement injunctive relief in ex parte proceedings before the provisions judge of the court of Rotterdam.

Acted as defence counsel for a listed spirits’ wholesaler in a court case on parallel importation of goods into the EEA market and the free circulation of goods within the EEA.

Acted as counsel in case C-174/15 before the European Court of Justice (judgment 10 November 2016): preliminary questions on the interpretation of the European copyright directive. The questions concerned the remuneration to which authors and publishers are entitled in case of 'e-lending' of eBooks by Dutch libraries.

ECJ 10 November 2016, case C-174/15, Vereniging Openbare Bibliotheken/Pictoright Interpretation Directives 2006/115/EC and 2001/29/EC. E-lending and copyright.

Advised a foreign company on its entry to the Dutch food delivery market. Advice given on the company’s intellectual property structure, licensing contracts and terms of use.

Defended a leading Dutch pipeline inspection company against a disclosure of evidence claim in interim relief proceedings before the District Court of The Hague. This was  the sole first-instance court in patent cases in The Netherlands. The Dutch defendant was the proprietor of the source code that allegedly infringed claimant’s US patent. All claims were denied. ECLI:NL:RBDHA:2016:11387

Defended Orange Financial Lease against the trade name infringement claims of claimant Financial Lease Nederland.

Acted as counsel before the European Court of Justice in case case C-379/14: preliminary question whether a trademark proprietor can oppose the import of its trademark products and the placing of these goods under a suspension regime on excise duties.
ECJ 16 July 2015, case C-379/14, Top Logistics/Bacardi, ECLI:EU:C:2015:497

First-instance court litigation concerning an alleged copyright infringement on behalf of Dutch defendant Mei Sum Food against Maxim’s Caterers Ltd. of Hong Kong. Infringement claims, access to seized documents claims and ancillary claims were refuted.

Represented a Dutch party organisation in its injunction order against defendant’s use of the trade name, domain name and Facebook page for “S’Oranje” in relation to King’s Day festivities under that name (ECLI:NL:RBROT:2015:2166).

Represented a certification institute in a defamation case against a press medium. Defendant was ordered immediately to cease and desist from publishing news articles about claimant and was ordered to remove and correct the disputed blogs on its website.

Litigation before the interim judge of the Dutch EU trademark court concerning the seizure of infringing goods in relation to the Anti-Piracy Regulation. Represented  the defendant and the claim to have the seizure lifted was refuted.

Represented a Dutch leisure boats’ manufacturer in appeal court litigation concerning copyright infringement of a competitor’s designs. In first instance and on appeal the claims were refuted.