CLEARSHIELD mark transferred as preliminary relief

In Ritec International Ltd v Ritec Holland BV (125782/KG ZA 03-568), the President of the District Court of Breda has ordered the transfer of trademark registrations for CLEARSHIELD and RITEC, holding that Ritec International's former distribution agent had filed the registrations in bad faith. The decision is remarkable as the order was issued in the course of preliminary court proceedings.

Ritec Holland distributed, under agreement, Ritec International's product used to protect glass. The product was marketed under the ClearShield brand. Ritec International terminated the distribution agreement on discovering that, in breach of EU law, its distributor was using the ClearShield brand for a glass protector that included different ingredients. Subsequently, Ritec International filed applications to register the trademarks CLEARSHIELD and RITEC with the Benelux Trademark Registry. However, it became aware that Ritec Holland had already registered CLEARSHIELD and RITEC in its own name in 1987 and 1999 without the required permission prescribed by the distribution agreement. It was also still using the marks despite the termination of the distribution agreement.

Ritec International initiated preliminary relief proceedings against Ritec Holland claiming (i) an injunction preventing Ritec Holland's use of CLEARSHIELD and RITEC, and (ii) transfer of the 1987 and 1999 trademark registrations.

The President of the District Court of Breda concluded that Ritec Holland had filed the CLEARSHIELD and RITEC registrations in bad faith and upheld the injunction claim, as well as ordering the transfer of the registrations to Ritec International.

The decision is remarkable as the order to transfer the registrations was issued in the course of preliminary court proceedings. In addition, by successfully persuading the court to issue this order, Ritec International succeeded in circumventing the standard five-year limitation period applicable to bad faith cancellation actions. According to the president of the court, no such limitation period exists for transfers of bad faith trademark registrations.

Paul Reeskamp, Allen & Overy, Amsterdam