Milbank LLP secured an important victory obtaining judgment on the pleadings on behalf of Boards & More Inc. (“B&M”) against North Sails Group, LLC (“NSG”) in a trademark infringement case filed in the US District Court for the Eastern District of Washington relating to the launch of B&M’s Duotone kiteboarding and windsurfing equipment. B&M is the US distributor of Boards & More GmbH (“B&M Austria”), one of the world’s foremost companies providing kitesurfing, stand up paddling and windsurfing equipment.
In May 2019, NSG, a global sailmaker and the largest division of the North Technology Group, filed a complaint against B&M and Boards & More GmbH (“B&M Austria”) for federal trademark infringement, unfair competition under federal and state law, and false advertising under the Lanham Act, alleging that B&M Austria’s launch of Duotone infringed certain North trademarks that previously were associated with B&M Austria’s products. Milbank moved to dismiss the action for lack of personal jurisdiction over B&M Austria and for failure to state a claim. On November 18, 2019, the court granted Milbank’s motion on both grounds.
In January 2020, NSG amended its complaint to assert claims against only B&M for Federal Trademark Infringement, Unfair Competition under federal and state law, and False Advertising under the Lanham Act. Milbank answered and moved for judgment on the pleadings. On April 1, 2020, Judge Bastian granted Milbank’s motion and entered final judgment in favor of B&M. In ruling for B&M, Judge Bastian held that (i) NSG failed to allege facts to support imputing B&M Austria’s alleged conduct to B&M and (ii) there is no likelihood of consumer deception as a matter of law.
This marks a third victory by Milbank against NSG. Milbank also secured early dismissal of all claims brought by NSG against B&M Austria and EMERAM Capital Partners as co-defendants in separate Connecticut federal and state court actions, including requests for emergency injunctive relief, relating to an alleged breach of a trademark license and related infringement claims. NSG’s appeal to the Connecticut Supreme Court is pending.
The Milbank team representing B&M is led by IP and Litigation partner Christopher Gaspar and includes IP and Litigation special counsel Nathaniel Browand, as well as IP and Litigation associates Javier Ramos, Sean Hyberg, Anna Bergstrom, and Eric Hyla.
