Infringement Victoria’s Secret’s trademark rights via Marktplaats.nl

Lingerie company Victoria’s Secret discovered that imitations of their products bearing their logo were being offered on the Dutch classified advertising site, Marktplaats.nl, by an advertiser calling itself ‘Victoria’s Secret Lady.’ Behind this name was a ‘welfare mother’ trying to earn some extra cash. Is this circumstance relevant to the case? Dutch Intellectual property rights lawyer Hidde Reitsma discusses the judgement in this trademark infringement case.

Infringement of trademark rights via Marktplaats.nl

Victoria’s Secret had summoned the advertiser. It asserted that the advertiser had infringed its trademarks, and claimed a prohibition of the trademark infringement, with ancillary claims. The court immediately established trademark infringement, as the advertiser had offered products for sale bearing the logo of Victoria’s Secret, without the consent of Victoria’s Secret.

Use in the private sphere or commercial activity?

The advertiser argued in vain that she had not traded in the products (which Victoria’s Secret had obtained through a test purchase) in commerce. She claimed to have purchased the products for her own private use via Facebook and to have offered these in used condition on Marktplaats.nl. Thus, according to the advertiser, no commercial activity with the object of economic gain had been involved, but only of use in the private sphere. Where use is exclusively in the private sphere, no infringement is involved.

Court: economic gain was object of sale

The court rejected this argument. The items purchased by Victoria’s Secret through the test purchase via Marktplaats had been in new condition. What’s more, the advertiser had offered several other products, all bearing the Victoria’s Secret logo. And in addition, the advertiser had made consistent use of the name Victoria’s Secret Lady in place of her own. The court therefore ruled that a commercial activity had been involved whose object had been economic gain. The court allowed the prohibition and the claim concerning the statement and (report pertaining to) surrender of profits. The compensation claim was also awarded.

Legal costs in trademark infringement cases

Finally, Victoria’s Secret claimed payment of its legal costs, amounting to € 5,800. In proceedings concerning the enforcement of intellectual property rights, the legal costs actually incurred must be reimbursed by the infringer. This is in deviation from the rule whereby the costs are awarded on the basis of fixed amounts.

Costs claimed unreasonable and disproportionate?

The advertiser opposed this claim, asserting that these costs were not reasonable or proportionate. She however also argued that only a small infringement had been involved and that she found herself in a precarious financial situation. The court was not of the opinion that a small infringement had been involved, as the advertiser had offered the imitation products in numerous advertisements.

Mitigation of the legal costs by reason of limited financial capacity

The court however made some allowance for the circumstances of the advertiser, a ‘welfare mother’ with two children receiving assistance from a commercial debt-counselling service. And Victoria’s Secret did not dispute that she would not have been able to pay the legal costs claimed. In order to prevent enforcement problems, the court reduced the legal costs to € 2,500.