A& F Trade Mark Inc. – a subsidiary of Abercrombie & Fitch – is the owner of several ‘Abercrombie’ and ‘Abercombie & Fitch’ trade marks amongst others in the Benelux and the EU. Before the District Court of The Hague A& F Trade Mark (AFT) started trade mark infringements proceedings on the merits in 2009 against four defendants in the Netherlands (Drent Trading B.V. and Fashion Gate B.V. as well as their directors - father and son - ‘X’ and ‘Y’). Both Drent Trading and Fashion Gate are involved in the trade of clothing. The proceedings were started after Kembel AG – a Liechtenstein company – had disclosed to AFT that clothing with trade marks of A&F affixed to it – offered for sale via the internet by German based company Private Sale GmbH, who had bought the clothing from Kembel AG – were delivered to Kembel AG by Idifex Limited (United Kingdom) ex warehouse Drent Trading BV / Fashion B.V. According to Kembel AG the clothing was sold to her with notices that the clothing was original and originated from an A&F distributor. Relying on this information AFT sent a cease and desist letter to defendants for trade mark infringement, after which the case went to Court.

With a judgement of July 27, 2011 the Court of The Hague (E.A.W. Schippers) rejected the claims of AFT. Defendants denied the infringement claims of AFT arguing that Idifex had acknowledged to have delivered clothing to Kembel, but had also denied that the clothing delivered to Kembel was not counterfeit. Furthermore defendants argued that the involved clothing was delivered ex warehouse Drent Trading, but that defendants had only acted as holder for Idifex, who from a factual and legal point of view delivered the clothing. Drent Trading did not offer the clothing for sale, put the clothing on the market or keep the clothing in stock. Defendants also disclosed that Idifex had bought the clothing from Jeans Factory, a Dutch company.

The Court held that even if one presumes that the clothing involved is counterfeit, it does not follow from this alone that defendants infringed the A&F trade marks. According to the Court A&F did not substantiate that defendants attached signs to the clothing that are identical to the trade marks. On the same ground the Court passed over A&F’s argument that defendants are still offering ‘A&F clothing’. Because this lack of substantiation the Court found no reason to admit AFT proof of these arguments.

Moreover the Court deducts from the arguments of AFT that defendants did not offer the clothing for sale or put them on the market. According to AFT’s arguments - which was evidenced by transport documents and other information received from Private Sale and Kembel – the carrier of the clothing Vögel collected the clothing ex warehouse of defendants from which place the clothing were sold by Idifex to Kembel. AFT did not raise any argument nor any evidence that the clothing was offered for sale by defendants themselves. For the Court it does not make any difference that Y represented Idifex on the sale and said that he is the owner of Drent Trading and that the clothing would be delivered ex warehouse Drent Trading. The Court also denied that the use of Drent Trading, Fashion Gate and Y as references accompanying the address of the warehouse from which the clothing was delivered, can be regarded as use of the trade marks which is only permitted to AFT. The same applies for import and export.

Keeping the involved clothing in stock for a third party – as Fashion Gate did for Idifex who was from a factual and legal point of view the party who offered the clothing for sale – is not and can not be regarded – according to the Court – as an offer for sale by Fashion Gate itself. The Court found that AFT did not state nor filed any evidence that defendants themselves used the trade marks in any commercial communication or in a way that the relevant public might come to think that there was a connection between Fashion Gate and the clothing sold by Idifex to Kembel.