The Presiding Judge of the District Court The Hague (R. Kalden) passed judgment on July 23, 2012 in a matter concerning the trade in 6.800 allegedly counterfeit ‘Guhl’ shampoo bottles, a dispute between Kao Kabushiki Kaisha (hereinafter ‘Kao’, producer of personal care products and owner of various word, figurative and shape trademarks for ‘Guhl’) and a market vendor (‘X’).

Kao started interlocutory proceedings against X after it received reports that there were counterfeit Guhl products on the Dutch market and Kao had identified market vendor X as supplier of the bottles. Before being summoned, X already signed a cease and desist letter: X would cease his infringing acts and would pay the profit generated by the infringing acts (according to X € 680,-) to Kao. Kao however, wanted to obtain more information about the suppliers of X and so the matter ended up in court.

On April 4, 2012 X reported the transaction by which he had required the Guhl counterfeit shampoo bottles as fraud to the police of Amsterdam-Amstelland. In this report, X declared that he was approached by two men he did not know, while working in his booth at the market place ‘Dappermarkt’ in Amsterdam. These two men wanted to exchange 6800 bottles of shampoo of the trade mark Guhl for 6800 other personal care products. According to X, this is a normal way of doing business at the marketplace. In his report, X again – as he also declared to Kao – stated that he could not provide any details about the identity of the two men.

Since Kao did not receive any information about the identity of the suppliers of X, Kao asked the Presiding Judge to order X to give a written declaration to Kao of the names and addresses of his suppliers and to impose a penalty. Kao argued that it is implausible that X is not able to provide any further information about the identity of its suppliers, because the number of products offered makes it unlikely that parties would engage in this trade without any exchange of identity. Furthermore, Kao obtained the administration of X with a provisional seizure of evidence, and it appeared that X kept remarkably accurate records for his business, but the transaction in question was not mentioned in the administration. Kao argued that it is plausible that X kept the trade of the infringing products outside his administration, but that he still is familiar with the identity of his trade partners or that he is at least able to obtain the information. Kao also referred to the fact that counterfeit products are often sold by criminals and that those involved fear reprisals and do not want to provide information about the origin of their infringing products voluntarily. Kao argued to be entitled to the advanced information and expects that an injunction under penalty will move X to provide the information as requested, or at least will force X to take the necessary steps to ensure that information. X argued that Kao had no legitimate interest for what it claimed, since it was – according to X – undisputed that Kao will not obtain the requested information when the claim is granted.

The Presiding Judge takes into account the circumstances of the trade in the infringing products, notably the substantial size of the lot, and – notwithstanding the statutory duty of administration – absence of any trace of the transaction in the administration of X. The Presiding Judge follows Kao in its assertion that the correctness of the declaration of X – that he has no information about the supplies, at least no more than he can possibly retrieve – is at least doubtful. The Presiding Judge finds that, taking into account the doubt regarding the correctness of the statement of X, it is possible that X has not provided all information to Kao about the origin of the infringing products. Therefore the Presiding Judge decides that Kao still has a legitimate interest to obtain an injunction.

Accordingly, the Presiding Judge orders X to provide Kao a written statement of the names and addresses of his suppliers of the counterfeit Guhl products, together with copies of documents in support of said statement, subject to a penalty of € 2.000,- a day or part of a day that X does not comply with this order.

(written by Neeltje van der Veeken)