The accidental incidental use of a brand by the former franchisee
The judgment of the District Court of Gelderland of 9 March 2016, ECLI:NL:RBGEL:2016:1691 (ERA Nederland/Houvast Makelaardij) concerns a situation in which a franchisee had terminated the franchise agreement with the franchisor. The franchisor confirmed the termination. The
franchisee was advised to remove all references to ERA from its business operations. The former franchisee has argued that he has actively removed the brands from ERA and that he has made further efforts to do so. Nevertheless, unintentional incidental brands of ERA have remained in use, caused by busyness and carelessness, according to the former franchisee. In some places, for example, ERA expressions have remained unintentionally visible on photos on the website of the former franchisee and on that of Funda and on for sale signs and posters of properties that the former franchisee manages.
According to the preliminary relief judge, the aforementioned use constitutes trademark infringement pursuant to Article 2.20 paragraph 1 sub a BCIP. The lack of malicious intent or intent on the part of the former franchisee does not detract from this infringement. Intent is not required for presuming an infringement. The fact that the unauthorized use of the trademark did not take place on a large scale does not detract from the infringement either. Pursuant to Article 2.21 paragraph 2 sub b BCIP, the damage is determined as a fixed amount on the basis of the license fee that would have been due under the terminated franchise agreement if the former franchisee had requested and received permission to use the ERA brands.
It follows from this judgment that it is important to realize that, in principle, the inadvertent and incidental continued use of trademark rights of the former franchisor can also be sanctioned.
mr. AW Dolphijn – Franchise lawyer
Ludwig & Van Dam Franchise attorneys, franchise legal advice.
Do you want to respond? Go to dolphijn@ludwigvandam.nl
Other messages
Franchisor liable for forecasts from third parties – dated March 6, 2019 – mr. M. Munnik
According to settled case law, a franchisor acts unlawfully towards its franchisee when a franchisor independently conducts research in a careless manner and as a result...
The (hard) franchise agreement and duty of care qualified – WPNR 7226 (2019)
The government intends to include a legal regulation on franchising in the Civil Code to protect the weak position of the franchisee.
The municipality must allow temporary Albert Heijn
On 7 February 2019, the District Court of Noord-Holland ruled on whether the municipality should allow a temporary Albert Heijn
Franchisors may no longer impose changes to store hours – February 12, 2019 – mr. AW Dolphin
At the end of 2018, a draft of the “Freedom of Choice for Retailers (Opening Hours) Act” was presented.
When does a franchisor go too far when recruiting franchisees?
The judgment of the Court of Appeal of Arnhem-Leeuwarden on 5 February 2019 dealt with whether the franchisor had acted impermissibly when recruiting the franchisees.
Advisory Board on Regulatory Pressure (ATR) advises State Secretary Keijzer about the Franchise Act
In short, it is first advised to actively inform franchisors and franchisees about this amendment to the law.