Published by LawTechie - February 2, 2011 - LawTechie

Kidz MedIn Technimed SRL v Kidz-Med, Inc., ex-distributor began to sell competing medical thermometer products in the same or substantially similar packaging as it had previously sold manufacturer’s thermometers. The distribution agreement between the parties had (wisely) provided that the product trademark belongs to the manufacturer but otherwise neglected to include any language regarding the product trade dress.

Manufacturer brought a trade dress infringement suit to prevent distributor from selling competing products packaged in virtually identical trade dress (and thereby confusing customers). Since there was no language regarding trade dress in the earlier distribution agreement, distributor argued that, having originated the packaging, the trade dress belonged to the distributor.

According to the Wrist-Rocket and Sengoku factors, which the court uses to decide the owner of a trade dress in the absence of a controlling agreement, the manufacturer is presumed to own the mark, which can be rebutted by considering four factors: “(1) which party invented and first affixed the mark onto the product; (2) which party’s name appeared with the trademark; (3) which party maintained the qualify and uniformity of the product; and (4) with which party the public identified the product and to whom purchasers made complaints.” Ultimately, after some motion practice and expensive discovery (presumably expensive for both parties), the court found in favor of the manufacturer.

Takeaway: A simple clause regarding trade dress in the distribution agreement would have saved manufacturer thousands of dollars in litigation.

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.


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