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Legal Actions from the creation of Ostbank

Holy Frankish Empire

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Nick
Fleur
To: Van Daalen Wakefield Price LLP
From: CPW Legal

Subject: Infringement



We are within providing the evidence and documentation requested.

1. Evidence of Public Announcement

Included are copies of the press conference transcript, video clips, and a link to a published account (found in Le Moniteur) of the Press Conference on January 26th, 2021.

2. Evidence of Registration as a company in @Ostmark

Attached are copies granted and notarized by the Government of Ostmark.

Applied for:
January 18th

Granted:
January 19th

Registration number: 67A-211-C
Registered under the name: OstBank Financial Group GmbH

3. Trademark approved January 17th, 2021 with the Bureau of Trademarking and Patents, Ministry of Finance

Trademark Numbers: 3459822-R, 3459823-R, 3459824-R

Trademarked Names: OstBank (822), OstBank Group (823), OstBank Financial Group (824)


The use of names which are identical or too similar to OstBank represents a clear infringement on the trademark and brand. Failure to uphold the request to cease use of the names Ostbank, OstBank, OSTBank, Oostbank or similar, will be taken as a move of bad faith and an attempt to circumvent basic trademark laws. Further legal action will be taken as this represents an ongoing investment of billions of Francs by FrankBank. We remind Standard Chartered that the basic definition of trademark infringement can be defined as occuring when: a person or company uses a trademark without authorization from the owner of the trademark in a way that will be likely to confuse or deceive the public about the source of the services and/or goods. Therefore, the use of Ostbank, Oostbank, OST Bank, or similar is a clear infringement.

Furthermore, continued infringement risks damaging the reputation of both FrankBank and Standard Chartered. A copy of this letter and the prior cease and desist notice has been forwarded to authorities in @Ostmark in order to ensure that our brand, trademark, and registration is upheld.

We hope that Standard Chartered will, in good faith, follow the request to cease infringing behavior and observe normal business practices. We furthermore hope that the authorities in Ostmark will observe our rightful legal claims and deny the use of any branding that infringes upon the OstBank name and trademark.

Sincerely,
Francois Brinon
Senior Attorney, CPW
 

Vrijpoort

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TO: CPW Legal
FROM: Van Daalen Wakefield Pryce LLP

RESPONSE
-confidential-

We thank you for the timely response and the attached documents, which we have reviewed with the legal counsel of our client, Standard Chartered Bank N.V.

Our client concedes that the naming of its subsidiary 'Ostbank GmbH' could be considered a trademark infringement due to the similarities in name to 'OstBank Financial Group GmbH'. After a full review it has been determined that the corporate registration authority in Ostmark allowed the registration of similar names because they were not identical and it is not their purview to determine the trademark status of registered entities.

Our client has therefore changed the name of its subsidiary from 'Ostbank GmbH' to 'Oostbank GmbH'. Our client believes this to be more than satisfactory as not only do the names not match at all, but the new name is in a different language - Vrijpoorts.

While the names may at first glance appear similar, it is to be noted that the spelling is different, the language is different, the full legal name of the entity does not match that of your client's and the pronunciation is different. Furthermore, the branding and logos are otherwise distinct and clearly distinguishable from those of your client's which would prevent any confusion on the part of potential customers.

As a gesture of good faith we have been instructed by our client to offer the following settlement deal:

1. Our client will cease trading under the name 'Ostbank' or 'Ostbank GmbH' effective immediately.​
2. Our client will publish a public letter in Ostmark, Vrijpoort and the HFE apologising for the mistake.​
3. Our client will pay damages to your client in the amount of 24,000,000ƒ (twenty-four million florins), which at today's spot rate is approximately 3 million Euromarks.​
Please review this offer with your client and let us know if there are any questions or requests.

Kind regards,
Joost van Daalen, Managing Partner
 

Holy Frankish Empire

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To: Van Daalen Wakefield Pryce LLP
From: CPW Legal


Regrettably, our client must decline this offer.

1. Oostbank GmbH remains too closely related to OstBank, a registered and trademarked name. Due to the similarity in services, the name Oostbank falls under the basic definition of a trademark infringement. Basic definition of trademark infringement includes use of trademark or branding in a manner that confuses consumers about the source or sponsorship of goods or services.

2. The use of Oostbank GmbH is clearly dilutive. The infringer's use of the can not only be confusing to customers but dilutes the standing of an existing, registered, and publicly noted trademark.

3. Regardless of different marketing and logo usage, the name itself remains an infringement. While pronunciation may different, it simply remains similar enough to cause confusion due to:
a. Similarity in services offered
b. Entry into the market at similar times
c. The likeliness of knowledge of pronunciation literacy is unknown
d. Previous marketing already engaged by both conflicting parties

We must therefore again insist that Standard Chartered change the name so as to not be similar to OstBank. Failure to do so will see immediate legal challenges in all 3 venues- @Ostmark, HFE, and in Vrijpoort. Our client is most appreciative of the previous offer but cannot accept it.


Regards,
Francois Brinon
Senior Attorney, CPW
 

Vrijpoort

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Nick
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TO: CPW Legal
FROM: Van Daalen Wakefield Pryce LLP

RESPONSE
-confidential-

Many thanks for your response. We find it regrettable that our client's generous and reasonable offer was not accepted. Our client has instructed us to keep it on the table for a further 48 hours should it be further considered.

Our analysis remains anchored in the following fact pattern:

1.
A trademark of a common word or phrase may only occur in combination with other trademarked elements such as colour scheme or logo and only the entire ensemble may be trademarked. This is also true of all trademark elements. A square cannot be trademarked per se. The colour red cannot be trademarked per se. A common word, like, ‘Paper’ may not be trademarked per se. The name ‘Paper’ within a red square, however, may be registered as a trademark.​
2.
Therefore, the words 'east' and 'bank', along with their Germanic relatives or any combination thereof, such as 'Ostbank,' cannot be trademarked per se on the above grounds. These words are simply too commonplace and do not achieve any degree of specificity upon which a trademark could be claimed. This is particularly true in a jurisdiction in which ‘Ost’/’Oost’/’East’ is a critical component of the name of the locality. In all of the named jurisdictions where you have threatened to sue, a trademark claim requires a more complex description than simply the trade name (‘doing business as’).​
3.
In Vrijport and Ostmark, Oostbank GmbH has registered a valid trademark which describes the trademark as including: the word 'oostbank' in the ‘Modernski’ font, all lower case. 'oost' is written in Vrijpoort green and 'bank' in Vrijpoort orange. The registered logo is a stylised tree. Oostbank GmbH does not operate in the HFE.​
4.
The above referenced logo is significantly distinct from the trademark registered to OstBank GmbH in the following ways: color, font, and logo. These three elements are longstanding components of Standard Chartered Bank N.V. branding. Should these elements appear in OstBank GmbH branding, they would constitute trademark infringement against our client and its parent company and we are prepared to litigate in defense of those claims.​
5.
OstBank GmbH and Oostbank GmbH have fundamentally different marketing models and are targeted at different consumers. OstBank operates a chain of retail branches with traditional banking services. Oostbank GmbH operates as an online mobile bank with a very limited physical retail presence. Furthermore, Oostbank GmbH offers products and services tailored to private customers and small and medium sized businesses and also offers wealth management services powered via proprietary automated investing algorithms as well as human-managed funds. These services differ from the target market and offerings of OstBank GmbH.​

We are happy to present these arguments to courts in any jurisdiction. We are certain that a claim against us in Vrijpoort will fail due to lack of any competing trademark. We expect a similarly swift resolution in the HFE, as Oostbank GmbH does not operate there and there are no grounds for a claim against Oostbank GmbH.

In addition, we also believe there to be minimal consumer confusion. This is the result of the swift and efficient rebranding to Oostbank Gmbh from Ostbank GmbH upon notice of the identical trade name of our clients’. Oostbank GmbH could have fought in the courts to remain operating as ‘Ostbank’, but it was less costly and more impactful to willingly rebrand and the rebranding is not to be interpreted as an admission of any kind. The pragmatic choice to maximise differentiation for their own benefit should have led to a mutually beneficial situation for all parties. Our exchange of letters, however, shows that no good deed goes unpunished.

Our client continues to believe in swift and efficient resolution to conflict and therefore would like to reiterate that our offer remains available. Should your client continue to reject our generosity, we suggest that we instead take this matter to an arbitration panel in Ostmark. A suitable and relevant local arbitrator in Ostmark would examine all documents and hear both sides before making a judgement as per local Ostmark laws. This would take much less time and be less costly.

Naturally should your client wish to take this matter to court we would be happy to see you there. However, we cannot imagine that the prospect of a lengthy, costly legal battle is any more enticing to your client than ours.


Kind regards,
Joost van Daalen, Managing Partner
 
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