Adani vs Odmedical B.V.
District court of The Hague 2 augustus 2007, Rolnummer KG ZA 07-1259, Adani vs Odmedical B.V.
Granting of the preliminary injunctions due to breech of an agreement determining the legal relationship between parties and breach of Adani’s trademark and copyrights. Acting in bad faith. Agreement determining the legal relationship over IP-rigths. Refund of costs incurred in the proceedings
In 1999 Adani marketed a body scanner named CONPASS. This scanner is in use at, amongst others, airports and prisons for the detection of weapons, plastic explosives, diamond and drugs. In eptember 2005 Adani registered the image trademark CONPASS and in July 2006 the word CONPASS as a trademark. Odmedical, a competing company, also marketed a body scanner. Adani and Odmedical were in dispute over whether Odmedical infringed on Adani’s trademarks and copyrights with regards to the CONPASS body scanner. To end the dispute parties agreed on a Agreement determining the legal relationships their IP-rights on the 8th of September 2006. In this agreement Odmedical distinctly recognised Adani’s IP-rights and declared not to infringe these rights.
After signing the agreement Odmedical offered advertisements of it’s bodyscanner, named SOTER RS security. These advertisements consisted of a CD-ROM on which test reports, test-certificates, licences, images and other documentation were stored. This documentation actually contained information on the CONPASS-bodyscanner. These document were also offered on Odmedical’s website as were images made by the CONPASS scanner. Adani claims Odmedical is in breech of the agreement of the 8th of September 2006 as they were infringing upon IP-rights held by Adani. These actions could also be seen as misleading and as illegitimate comparative advertisements as per the arts. 6:194 and 6:194a BW (Dutch Civil Code).
Odmedical claimed in defence that the information published on their website had been forgotten to be removed. Because of this oversight Odmedical’s dealer in Dubai, TSSS, was able to put the information on a cd-rom and thus the information of the COMPASS-scanner and the SOTER-RS scanner ended up being mixed up on the cd-rom. Odmedical however claims that this is not a case of comparative advertisings as the volume of cd’s was limited to between 10 and 20 cd’s. Moreover Odmedical states it cannot be held responsible for the actions of it’s dealers. If this would be a case of breech of contract the infraction would be so minor and insignificant that Adani would not be able to claim damages as a result of this breech. Odmedical claime it is a case of a stupid mistake made by Odmidical that barely has any consequences for Adani, let alone causing Adani damages.
The primary relief judge disagrees. Based on the material (printed material, the website and CD-ROM) provided by Adani the court finds is Odmedical infringing on the COMPASS (visual) trademark. Also Odmedical uses images of the CONPASS-bodyscanner and Odsecurity’s logo is depicted on the cd-rom. Printed material containing Certificats/Reports/Approvals of the CONPASS-bodyscanner were also supplied on the cd-rom promoting the SOTER RC-bodyscanner as were images made by Adani’s scanner promoting Odmedical’s scanner.
The court rules that Odmedical’s reason for publishing the materials on their website is highly unlikely and in any case so careless and thoughtless that it can be seen as an act of bad faith. Especially because party’s had previously has a disagreement with regards to copy- and trademark rights and as such has agreed upon an Agreement determining the legal relationship over their IP-rights. This means that Odmedical can be expected to be extra careful when it comes to Adani’s IP-rights. This carefulness should, amongst other things, consist of keeping close checks upon it’s distributors and their actions. This has not been the case and, as such, the court will ignore Odmedical’s argument that it is not responsible for the actions of it’s distributor, especially TSSS.
In conclusion Odmedical claims, with regards to compensation of incurred legal costs, that in this case the dispute concerns a breech of an agreement determining the legal relationship and not infringement of IP-rights. The court ignores this statement as the agreement has as it’s purpose to protect Adani against infringement it’s of IP-rights.
Read the entire judgement here.
