Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid v. Stewart et al

Filing 1

COMPLAINT against All Defendants. Filing fee $ 350.00 receipt number 113C-5050748, filed by Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid. (Attachments: # 1 Civil Cover Sheet, # 2 Summon(s) Summons - Martha Stewart, # 3 Summon(s) Summons - MSLO, # 4 Summon(s) Summons - Emeril Lagasse, # 5 Summon(s) Summons - HSNi LLC, # 6 Summon(s) Summons - SED International Holdings, # 7 Exhibit EX A, # 8 Exhibit EX B, # 9 Exhibit EX C, # 10 Exhibit EX D, # 11 Exhibit EX E, # 12 Exhibit EX F, # 13 Exhibit EX G, # 14 Exhibit EX H, # 15 Exhibit EX I, # 16 Exhibit EX J, # 17 Exhibit EX K)(Hoffman, Catherine)

EXHIBIT A

Protection of the Name "Solingen"
Guideline against Trademark Piracy

Introduction
What do you think of when you read or hear the name "Solingen"? Probably knives, cutlery or
scissors. What you may not be aware of, however, is that Solingen is the name of a town in Germany
and that this town is the centre of the German cutlery and scissor-making industry. Cutlery, and
indeed, blades of all kinds have been manufactured in Solingen for eight centuries. While the original
products were mainly swords and daggers, today's products range from cutlery and kitchen knives,
scissors and razor blades through to industrial knives and cutters. Cutlery and scissors made in
Solingen are of a particularly high quality. Thanks to high-grade materials, a ready supply of skilled,
qualified workers and excellent craftsmanship, these products are renowned and appreciated the
world over.
The name "Solingen" is, therefore, a description of the geographical origin of the product.
Geographical origins are protected all over the world by the provisions laid down in fair-competition
and trademark legislation. As a result, the use of such a name is only permitted in conjunction with a
product originating from that region.
Despite this protective legislation, the name of "Solingen" is often misappropriated. This misuse
usually takes the form of cheap-quality products manufactured elsewhere being offered for sale
worldwide under the famous name of Solingen. Such fake products can be manufactured at a fraction
of the cost that German manufacturers would be faced with. The consequences are manifold:
the business activities of the legitimate manufacturers and dealers of the original goods are
undermined
since the quality of the fakes is usually extremely poor, the name of Solingen is wrongly
associated with low-standard workmanship
deception and confusion among customers.
The aim of this brochure is to provide all those interested in protecting the name "Solingen" with
some important guidelines.

Protecting the name "Solingen" in Germany
As a name, "Solingen" can look back over a very long traditional history. The first documented
fakes appeared as far back as the 19th century. Since that time, there have been constant efforts to
protect the name. In Germany, the name has been protected by law since 1938. Today, protection for
the name is provided by general trademark legislation and a specific law called the "Decree for the
Protection of the Name Solingen" (Solingen Decree).
The Solingen Decree makes the use of the name Solingen on cutlery dependent on defined
geographical and quality characteristics. In addition, the products to which it applies are also defined.

Cutlery marked with "Solingen" must, under this legislation, meet stringent conditions.
They must,
during all the key manufacturing stages have been processed and finished within the industrial
boundaries of Solingen (which, for these purposes, includes not just Solingen but also the
neighbouring town of Haan)
and, in terms of their raw materials and manufacture, be suitable for the purpose for which
products of that type are made. This means that even cutlery which is manufactured within
Solingen's town boundary is not entitled to bear the name Solingen if it does not
conform to the required quality standards.
According to the Solingen Decree, the implements to which the restrictions apply are, apart from
scissors, cutlery, knives and blades, other table implements such as cake slices and nutcrackers, even
if they in themselves have nothing directly to do with "cutting". Furthermore, razors, hair-trimmers,
other personal hygiene instruments and knives used as weapons are all covered by the law (the full
text of which is included below).

-2The Solingen Decree does not, however provide concrete guidelines as to the definition of the "key
manufacturing stages" or the parameters defining the required quality standards. These questions
have, in practice, been left up to the local manufacturers to decide. As a result, the Chamber of
Commerce and Industry for the Wuppertal-Solingen-Remscheid area drew up a list in 1997 of the
"Minimum requirements for use of the name Solingen" in conjunction with all the fields of industry
affected and these are now recognised and applied by the corresponding manufacturers in Solingen's
cutlery industry (text below).
Anyone selling cutlery which is not, in fact, from Solingen, must not create the impression among
possible customers that it was made in Solingen. It is forbidden, in particular:
to mark the goods with "Solingen",
to apply stickers or labels bearing the name,
to refer to Solingen on the packaging,
to include certificates implying the goods were manufactured in Solingen,
to refer to the name Solingen in brochures or catalogues,
to refer to Solingen as the origin of the goods in advertising.
If a number of products are brought together in a set (e. g. a case of cutlery or a manicure wallet)
but only some of them are from Solingen, the supplier must avoid creating the impression that the
entire set was manufactured in Solingen. This false impression can easily be created if the reference
to the name Solingen is not unequivocally assigned to that specific article.
The phrase "designed in Solingen" is also forbidden for products not manufactured in Solingen.
The reason is that the consumer is likely to be distracted by the name "Solingen" to such an extent
that she or he is unaware of the word "designed" or does not even register it.

International protection of the name
The Solingen Decree and German trademark legislation are only valid in Germany. Abroad, the
use of the name "Solingen" is not specifically regulated but is covered as a geographical origin by
generally applicable fair-competition legislation and trademark regulations.
In a number of international agreements, many countries have mutually undertaken to provide
particularly effective protection of geographical names:
the Paris Convention for the Protection of Industrial Property of March 20, 1883 which Germany
joined in 1903;
the Madrid Agreement for the Repression of False and Deceptive Indications of Source on
Goods of April 14, 1891. Germany signed up to this agreement in 1925;
and a number of other bilateral agreements.

The consequences of the misuse of geographical origin
Criminal law consequences
Any person marking products with an incorrect geographical origin ("Solingen", "Germany" etc. ) or
importing or selling such incorrectly marked products in Germany is liable to a fine and even a
custodial sentence of several years. Similarly, anyone exploiting an incorrect origin designation with
the aim of taking advantage of the name or of damaging it is also liable to criminal prosecution. If the
Court decides that the use was unlawful, it may also rule that the offending marks be removed from
the products or that the products be destroyed.
In such cases, the criminal offence of deception may also have been committed. The victim will in
all probability have assumed she or he was purchasing a quality product from Solingen or Germany.
As a result, she or he was prepared to pay a price which bears no relation to the quality of the product
actually received.
Confiscation by Customs
If fake goods are imported, exported or transported through the country in transit, the Customs are
entitled to confiscate them if there has clearly been a breach of the law. If a routine inspection provides

-3grounds for suspicion, the Customs Officers may retain the suspect goods for closer inspection. If the
suspicion proves to be founded, Customs may pass a confiscation order and rule that the offending
markings be removed; this might entail the grinding-off of an incorrect origin designation or the
destruction of wrongly printed packaging. If the offender does not comply or if such measures are not
practicable, Customs may retain the goods completely.
Written warnings by competitors or Chambers of Commerce
The State's prosecutors and public affairs offices are also empowered to take action under criminal
and administrative law. Apart from these measures, competitors, fair-trading and consumer
associations and Chambers of Commerce can all take civil action against incorrect use of the name
Solingen irrespective of question as to whether individual guilt can be demonstrated or not. A seller of
fake products can, for example, be legally required not to become involved in such misuse in the
future. The victim can also insist that the illegal situation be remedied. This might involve replacement
of packaging bearing the name Solingen illegally, the application of a label or the removal of the
incorrect marking or even the destruction of the offending goods. The offender can also be required to
pay damages if the improper action has led to someone suffering personal damage or injury.
There are similar regulations and laws in other countries. The infringement of regulations on
indications of geographical origin is usually both a criminal offence and contrary to competition
legislation. There are also legal regulations on confiscation and destruction of fake goods in nearly
every country.

A guide to fakes
A layperson cannot, as a rule, see whether the knife she or he is holding and which bears the
name "Solingen" has, indeed, been manufactured in Solingen. There are, however, a number of
typical characteristics which can indicate grounds for suspecting the product is a fake. If they are
present, the matter should be investigated. Where doubts arise, the contacts and experts listed below
can be consulted.
Ask yourself these questions:
Is the source of the products trustworthy?
Ensure your suppliers are reliable. If the seller is not known to you, ask the German
Foreign Trade Commission in your country for advice.
A trustworthy dealer will, as a rule, provide the opportunity to make inquiries about the
manufacturer and the brand and will generally keep a stock of brochures or catalogues.
Make your own enquiries about the manufacturers and brands used for Solingen cutlery.
Fakes are often marketed under imaginary names which are not registered or listed.
Remember: Fake products are often imported from the Far East but genuine products
from Solingen can only come from Germany.
How are the goods marked?
Solingen brand-name manufacturers will generally mark their products with the brand name, company
name and details of the material, which enables you to trace them back to the manufacturer. Grounds
for caution:
if no manufacturer's name is recognisable;
if the knife blades bear coloured, sprayed-on marks; German manufacturers never use
paint on the blades for hygiene reasons;
if cutlery is unstamped or bears variety of different symbols within one series;
if only the word "stainless" is used without more detailed information.
What is the packaging and advertising like?
Read the packaging, advertising and documentation attentively: sometimes there is a reference to
the real origin apart from "Solingen" and usually in small type. Caution:
if the word "Solingen" is used excessively: not only on the product itself and the
packaging but also on labels, loose documents in the box, trays etc.
if the cutlery or knife cases contain certificates pertaining to be quality and origin
certificates.
if incorrect German or English is used or typographical errors are evident in
accompanying documentation and on "certificates".

-4What impression does the quality of the goods make?
Genuine Solingen cutlery is of a high quality standard due to the stringent requirements of German
regulations. It pays to inspect the goods for obvious faults. You are entitled to be suspicious
if the overall impression of the product and its packaging is generally one of poor quality;
if cutting edges are not really sharp;
if knives or other cutlery parts are bent or can easily be bent;
if the cutlery has the following characteristics:
o
the knife blades within one set have differing grinding patterns on the edges;
o
items in the set have rough edges, pitting or holes in the surface of the material;
o
the space between the prongs of the forks is not smoothly ground
o
matching items within one set do not lie neatly together or they have differing
shapes;
o
cutlery marked as being 18/10 is magnetic;
if you notice the following points on kitchen knives:
o
moulded handles are a bad fit, i.e. there is a gap between the blade and the
handle;
o
with riveted handles, the two halves of the handle are not smoothly ground off or
rivet ends are standing proud;
o
the blades themselves have not been surface treated;
o
if you pass your finger nail over the surface of the ground part of the blade, you feel
a roughness like that of a nail file – your finger nail actually gets caught;
o
if you drop the knife from a height of 1. 20 metres (handle pointing down) the knife
is damaged by the impact (this does not apply to the tip of the blade);
o
the blade is evidently thick and not forged; the grinding angle a few millimetres
back from the cutting edge is noticeably obtuse.
Do you notice anything else?
Be wary of generous discounts on high purchase prices.
Have a close look at the typeface: The name "Solingen" is often used with different
spelling in such a way that it is hardly noticeable. The name "Silingen" has, for example,
been used.
The phrase "designed in Solingen" is a fairly clear sign that the goods are definitely not
manufactured in Solingen.
Furthermore, the respected name of "Solingen" is also exploited for other kitchen products. There
are pots and pans on the market that create the impression that they have been manufactured in
Solingen. However, for many years, there have been no manufacturers of pots and pans in Solingen.
In such cases, there is no direct infringement of the Solingen Decree because this only protects cutlery
and scissors. Despite this, it does constitute deception of the customer and amounts to an offence
under trademark and fair-trading legislation and in criminal law.

Experts
Even if there are grounds for suspecting misuse of the name "Solingen", this is still a far cry from
hard evidence of an offence. This evidence, however, can be found if an expert is consulted.
Experienced experts can, using a number of characteristic features, such as the shape of the product
or the material used, determine whether or not the item of cutlery or scissors was, in fact,
manufactured in Solingen.
The names and addresses of such experts are available from the Chamber of Commerce and
Industry for Wuppertal-Solingen-Remscheid.

Contact
If you have queries relating to protection of the name Solingen, please contact the Chamber of
Commerce and Industry Wuppertal-Solingen-Remscheid or the Industrial Association for the Cutlery
and Household Goods Industries. There is a specific organisation dealing with trademark piracy in
Germany: the APM (Aktionskreis Deutsche Wirtschaft gegen Produkt- und Markenpiraterie). The
Central Office for Proprietary Rights at the Federal Finance Ministry is responsible for all matters
relating to the confiscation of fake products on import, export and in transit.

-5-

Names und Adresses
Industrie- und Handelskammer
Wuppertal-Solingen-Remscheid
(Chamber of Industry and Commerce)
Heinrich-Kamp-Platz 2, 42103 Wuppertal
Internet: www.wuppertal.ihk.de
Ludger Benda
Tel. [phone] - 400
Fax [phone] - 499
E-Mail: [e-mail]
Susanne Abendroth-Kersting
Tel. [phone] – 355
Fax [phone] – 389
E-Mail: [e-mail]
Industrieverband Schneidund Haushaltswaren e. V.
(Industrial Association for the Cutlery and Household Goods Industries)
Neuenhofer Str. 24, 42867 Solingen
Internet: www.ivsh.de
E-Mail: [e-mail]
Jens-Heinrich Beckmann
Tel. [phone] - 10
Fax [phone] - 29
Karola Scholz
Tel. [phone] - 13
Fax [phone] - 29
Aktionskreis Deutsche Wirtschaft gegen Produkt- und Markenpiraterie (APM)
Breite Straße 29, 10178 Berlin
Rechtsanwalt Lennert Röer
Tel. [phone] – 27 17
Fax [phone] – 27 18
E-Mail: [e-mail]
Internet: www.markenpiraterie-apm.de
Oberfinanzdirektion Nürnberg
Zentralstelle Gewerblicher Rechtsschutz
(Central Office for Proprietary Rights at the Federal Finance Ministry)
Sophienstr. 6, 80284 München
Tel. [phone] – 0
Fax [phone] – 2317
E-Mail: [e-mail]
Internet: www.grenzbeschlagnahme.de

-6-

Regulation for the Protection of the Solingen Name
(Solingen Regulation)
On the basis of § 137 of the law on trademarks of 25 October 1994 (German law gazette I 1994, p.
3082) the Federal Ministry of Justice decrees in agreement with the Federal Ministry of Economics, of
Food, Agriculture and Forestry and of Health:
§ 1 Principle
The name Solingen may only be used in business for such cutting equipment which
1. was processed and finished in all major stages of manufacturing in the Solingen industrial
area and
2. is able to achieve its characteristic intended use according to raw material and processing.
§ 2 Region of Provenance
The Solingen industrial area includes the area of the urban commune Solingen and the area of the
town Haan which is in the district of Mettmann.
§ 3 Definition of Cutting Equipment
Cutting equipment according to § 1 are in particular:
1. Scissors, knives and blades of all types,
2. Cutlery of all types and parts of such,
3. Small equipment for table use such as cake slicers, cake-tongs, sugar-tongs, grape scissors
and serving cutlery,
4. Table utensils such as cigar cutters, letter openers, nutcrackers and cork screws as well as
cutting kitchen tools such as tin openers and knife-grinders,
5. Open razor, razor-blades, razors,
6. Hair clippers and shaving machines,
7. Manicure and pedicure equipment such as nail-files, cuticle and nail forceps, nail clippers and
tweezers,
8. Cutting and thrusting weapons of all kinds.
§ 4 Effective from
This regulation will come into effect on 1 January 1995.
The Federal Council of Germany has accepted the regulation.
th

Bonn, December 16 , 1994
The Federal Minister of Justice
Leutheusser-Schnarrenberger

-7-

Minimum Requirements for the "Solingen" Qualification
The following minimum values represent the criteria for the "Solingen" qualification of cutting
equipment which correspond to the manufacturer's contemporary concepts of "Solingen" cutting
equipment. These minimum requirements putting in concrete terms the major stages of manufacturing
as well as guaranteeing the characteristic use, are an expression of the present fair practices,
procedures and applications for the production of cutting equipment in the industrial area of Solingen
according to § 137 section 2 clause 2 of the law on trademarks.
I. Major stages of manufacturing for cutting equipment according to § 1 clause 1 of the
Regulation for the protection of the Solingen name
1. Manufacture
warm forged
cold forged
mechanical processing
heat treatment
surface, mechanical
surface, galvanic/chemical
finishing touch
2. Assembly
-

of synthetic handles
of wooden handles
of steel handles
of cast handles
of handles made from other materials
of component halves and other component parts
final assembly of instruments

II. Fulfilment of the Requirements according to § 1 clause 2 of the Regulation for the
Protection of the Solingen Name
All types of materials which are suitable for the appropriate manufacturing and processing method
to achieve the characteristic use of the product are admissible. When using material other than
steel, a minimum quality according to the following requirements must be achieved.
1.

Products of Stainless Steel
1.1.

Knives
Fulfilment of requirements according to DIN EN ISO 8442-1

1.2.

Scissors
Material: Steel according to prEN 10088-1 - X46Cr13
Minimum hardness 52 HRc

1.3.

Cutlery
1.3.1. Silver-plated and non-rusting cutlery:
Fulfilment of requirements according to DIN EN ISO 8442-2
1.3.2. Gold-plated cutlery:
Fulfilment of requirements according to DIN EN ISO 8442-4

1.4.

Open Razors and Razor-blades
Material: No specific details
Minimum hardness for open razors 58 HRc
Minimum hardness for razor-blades 55 HRc

1.5.

Manicure and Pedicure Equipment with Cutting and Filing Function including
Nail Clippers
Material according to prEN 10088 - X20Cr13
Minimum hardness 48 HRc
Minimum hardness for cuticle forceps 46 HRc

1.6.

Nail-files
Material according to prEN 10088 - X39Cr13 for flexible nail-files

-8Minimum hardness 50 HRc
The file must be "spring-hard" in its total length.
1.7.

2.

Tweezers
Material: corrosion-resistant steel or non-ferrous metal,
no specific details
The characteristics of the material must be such that the required spring and tip
position depending on the use will remain unchanged.

Products Made of Unalloyed Quality Steels
2.1.

Knives
Material according to EN 10083 - 1 C 45 –TN
Minimum hardness 50 HRc

2.2.

Scissors
Material according to EN 10083 - 1 C 45 – TN
Minimum hardness 50 HRc

2.3.

Cutlery
Cutlery made of unalloyed, unprotected steels are not admissible.

2.4.

Open Razors and Razor-blades
Material: At least 1.1% C
Minimum hardness 60 HRc

2.5.

Manicure and Pedicure Equipment with Cutting and Filing Function including
Nail Clippers
Material according to EN 10083 - 1 C 35 – TN
Minimum hardness 45 HRc
Material according to EN 10083 - 1 C 45 – TN for nail clippers
as well as cuticle and nail forceps
Minimum hardness for nail clippers 50 HRc
Minimum hardness for cuticle and nail forceps 46 HRc

2.6.

Nail-files
Material according to EN 10083 -1 C 60 for flexible nail-files
Minimum hardness 45 HRc
The file must be "spring-hard" in its total length.
Material according to EN 10083 -1 C 45 for non-flexible nail-files
Minimum hardness 45 HRc,
other base materials are admissible

2.7.

3.

Tweezers
Material: no specific details
The characteristics of the material must be such that the required spring and tip
position depending on the use will remain unchanged.

Other Requirements and Regulations
3.1.

All details regarding hardness refer to the cutting or filing parts of the products. For
knives the complete blade is meant hereby and not just the cutting edge. The
materials must be hardened in consideration of the temperature control required for
the respective steel. Examinations of the hardness and microstructures must be
applied to the whole blade.

3.2.

The ability that scissors, forceps and clippers cut along the total length of the blade
must be ensured.

3.3.

The roughness of the blades of table knives may not go beyond 3.0 µ m according to
Rmax and for other knives and scissors not beyond 6 µ m according to Rmax .

3.4.

When examining scissors as to their "Solingen" quality, the joint, halm and finger hole
of the scissors are also to be examined.

-93.5.

Inasmuch as further DIN EN or ISO standards are applicable for individual product
groups, these standards are to be applied.

3.6.

For nail-files all surfaces outside the filing areas including the edges must be deburred
and smooth. Filing areas can be: cut with at least two strokes, galvanically deposited
granulation, e.g. sapphire, galvanically formed or etched structures or other surfaces
with comparable filing action.

3.7.

For tweezers the component halves must be firmly welded together and be perfectly
deburred all around. The spring position must have an even aperture angle. The
function of the tweezer points must be ensured.

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Members of international agreements
about the protection of geograpfic indications
Members of …
Albania
Algeria
Antigua and Barbuda
Argentina
Armenia
Australi
Austria
Azerbaijan
Bahamas
Bahrain
Bangladesh
Barbados
Belarus
Belgium
Belize
Benin
Bhutan
Bolivia
Bosnia and Herzegovina
Botswana
Brazi
Bulgaria
Burkina Faso
Burundi
Cambodia
Cameroon
Canada
Central African Republic
Chad
Chile
China
Colombia
Congo
Costa Rica
Côte d'Ivoire
Croatia
Cuba
Cyprus
Czech Republic
Democratic People's
Republic of Korea
Democratic Republic
of the Congo
Denmark
Djibouti
Dominica
Dominican Republic
Ecuador
Egypt
El Salvador
Equatorial Guinea
Estonia
Finland
France
Gabon
Gambia
Georgia
Germany
Ghana
Greece
Grenada
Guatemala
Guinea
Guinea-Bissau
Guyana
Haiti

…
Paris
Convention
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Members of …
Holy See
Honduras
Hungary
Iceland
India
Indonesia
Iran (Islamic Republic of)
Iraq
Ireland
Israel
Italy
Jamaica
Japan
Jordan
Kazakhstan
Kenya
Kyrgyzstan
Lao People’s
Democratic Republic
Latvia
Lebanon
Lesotho
Liberia
Libyan Arab Jamahiriya
Liechtenstein
Lithuania
Luxembourg
Madagascar
Malawi
Malaysia
Mali
Malta
Mauritania
Mauritius
Mexico
Monaco
Mongolia
Morocco
Mozambique
Nepal
Netherlands
New Zealand
Nicaragua
Niger
Nigeria
Norway
Oman
Panama
Papua New Guinea
Paraguay
Peru
Philippines
Poland
Portugal
Qatar
Republic of Korea
Republic of Moldova
Romania
Russian Federation
Rwanda
Saint Kitts and Nevis
Saint Lucia
Saint Vincent and
the Grenadines
San Marino
Sao Tome and Principe

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Paris
Convention
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… Madrid
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Members of …
Senegal
Sierra Leone
Singapore
Slovakia
Slovenia
South Africa
Spain
Sri Lanka
Sudan
Suriname
Swaziland
Sweden
Switzerland
Syrian Arab Republic
Tajikistan
The former Yugoslav
Republic of Macedonia
Togo
Tonga

…
Paris
Convention
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… Madrid
Agreement

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Members of …
Trinidad and Tobago
Tunisia
Turkey
Turkmenistan
Uganda
Ukraine
United Arab Emirates
United Kingdom
United Republic
of Tanzania
United States of America
Uruguay
Uzbekistan
Venezuela
Viet Nam
Yugoslavia
Zambia
Zimbabwe

…
Paris
Convention
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… Madrid
Agreement
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