Infringement on trademarks Tommy Hilfiger
Court of The Hague 23 October 2019, IEF 18781;ECLI:NL:RBDHA:2019:11058 (Tommy Hilfiger v. Premium)
Tommy Hilfiger owns various trademarks. Premium has resold clothing of Tommy Hilfiger, on which these trademarks were shown, without Tommy Hilfiger’s permission. According to Tommy Hilfiger Premium infringes the trademark rights of Tommy Hilfiger. In the present case the trademark rights of Tommy Hilfiger have been infringed and Premium is obliged to compensate the damage suffered as a result of the trademark infringement. It is confirmed that the supply or offer of original branded goods from the US to parties established in European Union in the case of 'ex works' (the receiving party is liable) is also unlawful and constitutes trademark infringement. The ex works defense of Premium only relates to the internal relationship between the supplier and the buyer with regard to transport liability and not to infringement of third party rights. It is therefore irrelevant for the position of the supplier that it delivers 'ex works'. The fact that the customers are located in Europe constitutes trade mark infringement both in terms of sales and offers. The sale and supply of American Tommy Hilfiger products to retailers established in the European Union constitutes, in the opinion of the Court, a trade mark infringement in the European Union, irrespective of the means of transport used.
The conclusion of the foregoing is that Premium has infringed the trademarks of Tommy Hilfiger. Therefore, the claimed infringement prohibition will be granted with regard to Tommy Hilfiger Licensing BV and Tommy Hilfiger Europe. Because the provisional prohibition has already been given and served, the prohibition can take effect immediately after service. Tommy Hilfiger LLC no longer has an interest in a prohibition because it is no longer a proprietor of the trade mark.
Premium is liable for the damage suffered by Tommy Hilfiger c.s. as a result of the trademark infringement and it is obliged to compensate these damages, so that the claim to that effect will be granted, albeit in a limited form as stated in the judgment. For Tommy Hilfiger LLC the amount of damage is limited in time to the moment of transfer of the Tommy Hilfiger trademarks to Tommy Hilfiger Licensing BV, and furthermore, as far as territory is concerned, to infringement in the Benelux of the Tommy Hilfiger Benelux trademarks.
https://www.ie-forum.nl/artikelen/inbreuk-op-merken-tommy-hilfiger (only available in Dutch)