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 B

Protection of the Brand

Guideline against Trademark Piracy
and Misuse of the Famous Name

Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid
Mail: P.O.Box 42 01 01 | 42401 Wuppertal, Germany | Office: Heinrich-Kamp-Platz 2 | 42103 Wuppertal, Germany
Phone [phone] | Fax [phone] | E-Mail: [e-mail] | Internet: www.wuppertal.ihk24.de

Protection of the Brand „Solingen“

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.
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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.

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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:
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deception and confusion among customers,
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the business activities of the legitimate
manufacturers and dealers of the original
goods are undermined,
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since the quality of the fakes is usually extremely poor, the name of Solingen is
wrongly associated with low-standard
workmanship.

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 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-SolingenRemscheid 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.

Regulations of the protection
As a name, "Solingen" can look back over a very
long traditional history. The starting point to be a
geographical indication was in 1571, when the
reigning Duke Wilhelm von Berg gave the order to
label every blade made in Solingen with the Latin
words “ME FECIT SOLINGEN” (= “Me made Solingen”).
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).

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:
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to mark the goods with "Solingen",
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to apply stickers or labels bearing the name,
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to refer to Solingen on the packaging,
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to include certificates implying the goods
were manufactured in Solingen,
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to refer to the name Solingen in brochures or
catalogues,
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to refer to Solingen as the origin of the
goods in advertising.

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,

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Protection of the Brand „Solingen“

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 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.

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

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.

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:
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the Paris Convention for the Protection of
Industrial Property of March 20, 1883 which
Germany joined in 1903;
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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;
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Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of April, 15
1994
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and a number of other bilateral agreements.

Confiscation by Customs
If fake goods are imported, exported or transported
through the country in transit, the Customs authorities in most countries are entitled to confiscate
them if there has clearly been a breach of the law. If
a routine inspection provides grounds 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.

Although most countries are member of at least one
of the mentioned agreements, they often have no
specific legislation in favour of geographical indications. As a rule they only have regulations against
unfair competition. To consolidate the legal position
of the brand “Solingen” the Chamber of Industry
and Commerce Wuppertal-Solingen-Remscheid has
registered trademark, collective and certification
marks in more than 40 countries of the world, e.g. in
the European Union, USA, China, Russia and Canada.

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.

The regulations attached to the collective marks
include the same preconditions that the German law
requires. Cutting products labelled with “Solingen”
have to be produced in every essential step of
manufacturing within the area of Solingen and
conform to the defined standard of quality.

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Protection of the Brand „Solingen“

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.

Do you notice anything else?
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Be wary of generous discounts on high purchase prices.
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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
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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.

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.
Is the source of the products trustworthy?
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Ensure your suppliers are reliable.
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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.
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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.
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Remember: Fake products are often imported
from the Far East but genuine products from
Solingen can only come from Germany.

More information
You find more information about the subject on the
web-site of the Chamber of Commerce under the
following internet-address:
http://www.wuppertal.ihk24.de/produktmarken/
recht_und_fair_play/schutz_solingen/index.jsp
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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.

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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.

Regulation for the protection of the name
Solingen
Minimum requirements for the Solingen
qualification
Regulations for the Use of the Collective
Mark "Solingen"

Contact
Industrie- und Handelskammer
Wuppertal-Solingen-Remscheid
(Chamber of Industry and Commerce)
Heinrich-Kamp-Platz 2, 42103 Wuppertal
Internet: www.wuppertal.ihk.de

What 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
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if the overall impression of the product and
its packaging is generally one of poor quality;
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if cutting edges are not really sharp;
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if knives or other cutlery parts are bent or
can easily be bent.

Mr. Ludger Benda
Tel. [phone] - 400
Fax [phone] - 499
E-Mail: [e-mail]

Mrs. Susanne Abendroth-Kersting
Tel. [phone] - 410
Fax [phone] - 499
E-Mail: [e-mail]

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