IP & pharma
Our IP team specialises in all aspects of trademark and design law, copyright and trade name law. The parallel trade in products protected by trademark and patent law in the light of the free movement of goods under European law is a particular area of expertise. The lawyers of the IP department regularly litigate before the Dutch courts, the BOIP, the EUIPO and the Court of Justice of the European Union. Our lawyers also have extensive experience in (ex parte) seizures of evidence, summary proceedings and proceedings in the field of access to and obtaining of evidence (843a of the Dutch Code of Civil Procedure). Pharmaceutical law (registration, IP aspects and cross-border distribution) is another specific area of our expertise.
"Windt Le Grand breaks into the WTR 1000 this year on a wave of recommendations. Its practitioners have got the resolution of multi-faceted disputes down to a fine art and bring the heat in forums all the way up to the CJEU." - WTR1000, 2021
Recent matters
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.
