The district court of Midden-Nederland recently rejected a request by Chanel to gain access to the administration of Bol.com, the most popular market and online store in the Netherlands. (1)
Bol.com was an online store that stocked millions of items, including Chanel products. The online marketplace was not part of Chanel’s selective distribution system and Chanel had not authorized Bol.com to sell its products.
Chanel asked Bol.com to provide information on the origin of the Chanel-branded products sold. Chanel wanted to use this information as evidence to determine the extent of the violation of its trademark rights and to trace the origin of the Chanel products that Bol.com has been offering and selling since 2015.
In the Netherlands, a general discovery essay is an unknown phenomenon. However, certain information can be obtained in application of article 843a of the code of civil procedure (CPP). These requests can be lodged in the form of a complaint within the framework of a global procedure but also by means of a separate procedure. To grant such a request, three conditions must be met (cumulatively):
- There must be a legitimate interest in disclosure (collecting evidence to prepare for a possible claim is a legitimate interest).
- The disclosure request must relate to specific documents (a “fishing trip” is not permitted).
- There must be a legal relationship between the two parties involved. Such a relationship may exist by virtue of a contractual relationship but may also consist of an unlawful act (for example, a violation of intellectual property rights). According to standard Supreme Court case law, the existence of the legal relationship must be sufficiently plausible.
In this case, the requirement of a legal relationship proved problematic for Chanel. Specifically, Chanel had to be able to set out the facts and circumstances of the alleged intellectual property infringement and, if so, support them with evidence to show that it was sufficiently plausible that a threat infringement of intellectual property rights exists.
As the brand owner, Chanel had the right to control the first marketing of its branded products in the European Economic Area (EEA). According to Bol.com, sales of Chanel products involved concurrently licensed imported goods, which had been licensed by Chanel (or one of its distributors) to be sold in the EEA, after which all trademark rights had been exhausted. .
As for the existence of a legal relationship, Chanel mainly argued that Bol.com violated its trademark rights for the following reasons:
- Bol.com was selling non-genuine Chanel products or exchanging Chanel products that Chanel had not placed on the European domestic market or had not given its consent to do so. However, the court rejected this argument because Chanel had not been able to prove that the Chanel products sold by Bol.com were counterfeit or related to unauthorized parallel imports. Some test purchases made by Chanel were for products with a track-and-trace code. During the hearing, Chanel had indicated that these specific test purchases were original and authorized for the EEA.
- Bol.com had purchased Chanel products from distributors selected by Chanel. However, those distributors had not been contractually authorized to resell the products, which Chanel said prevented the exhaustion of its trademark rights. The court also rejected this argument. He considered that the violation of an obligation by a distributor not to resell outside a selective distribution system does not prevent the exhaustion of trademark rights.
- The act and method of selling Chanel products damaged Chanel’s prestigious and luxurious image, which meant that Chanel could continue to invoke its trademark rights. The court found this argument irrelevant in light of Chanel’s access to information request. She held that, regardless of the fact that Bol.com’s sales damage Chanel’s image, Chanel had no legitimate interest in the documents she had requested under SPC Section 843a (i.e. , purchase contracts, product orders, order confirmations, delivery confirmations, purchase invoices, sales invoices and correspondence with suppliers’ representations and warranties regarding delivery and origin). The court further stated that the requested documents, by their nature, could not be used to determine the manner in which Bol.com had offered and presented Chanel products for sale or whether these sales had damaged the reputation of the Chanel brands.
Therefore, the court rejected Chanel’s claim.
The specific procedure for obtaining information under Article 843 bis of the CCP required Chanel to prove the existence of a plausible threat of intellectual property infringement. The outcome of this case will be particularly bitter for Chanel given that in a regular trademark infringement case, parallel importers normally have the burden of proving that the specific branded products sold are allowed to be sold in the EEA. In due process for trademark infringement, Chanel should have only declared that the goods were not authorized for the EEA and could have waited to see if the parallel importer could prove (by means of a paper trail) that the goods were not authorized for the EEA. specific goods were allowed.
Chanel will undoubtedly begin due process against Bol.com in the near future.