This month, our appellate team comprised of Gerry Fornwald, Kyle Kroll, and Cianna Halloran prevailed at the Third Circuit Court of Appeals in obtaining victory for our client, an American distributor. The case involved a dispute with a German manufacturer of medical devices. Previously, our trial team obtained a jury verdict for our client in the District of Delaware. The German manufacturer appealed, seeking reversal of the jury verdict in our client’s favor on claims for breach of contract and trademark infringement. The Third Circuit agreed with the jury and our arguments on all counts.

Breach of Contract by the German Manufacturer: The jury had found that the German manufacturer wrongfully terminated its contract with our client. On appeal, the German manufacturer argued that it was allowed to terminate the Distribution Agreement because the American distributor alleged misused trademarks and tried to rebrand products as its own. The Third Circuit found there was substantial evidence that the American distributor never attempted to register the trademark or challenge the German manufacturer’s ownership of it. We prevailed in showing the American distributor only used the trademark to promote and sell products, and the German manufacturer’s claims of adverse effects on their trademark rights were unsupported.

Trademark Infringement Counterclaims: The German manufacturer also claimed that the American distributor’s actions constituted trademark infringement and that the District Court wrongly instructed the jury on a defense to this claim. The Third Circuit held that the defense was properly presented to the jury and did not mislead them. Our client had timely raised the defense, and the German manufacturer failed to show any prejudice resulting from this instruction. We prevailed in showing the jury’s conclusion that our client did not infringe the German manufacturer’s trademark was reasonable and supported by evidence.

Other Rulings: The German manufacturer also sought to challenge other rulings, ranging from exclusion of certain evidence to denial of transfer of trademark registrations following trial. The Third Circuit ruled the evidentiary rulings were immaterial and that the German manufacturer was not entitled to the trademarks held by our client. In summary, we obtained complete affirmance of this jury trial win on appeal.

A full copy of the decision can be found at this link. Our team is grateful to have represented the American distributor, at both the trial and appellate levels, in this complex case.

June 25, 2024