Holland & Knight Defends The Florida Priory of the Knights of Malta in Intellectual Property Dispute
West Palm Beach, Fla. – October 7, 2011 – Holland & Knight successfully defended client The Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem, Knights of Malta, the Ecumenical Order against charges of trademark infringement, false advertising and unfair competition issues.
On September 29, the U.S. District Court for the Southern District of Florida ruled in favor of the firm's client, bringing to close an unusual case that featured testimony on the activities of Napoleon, Tsar Paul I of Russia and other historical figures.
The charges were brought by the Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta (SMOM), a Catholic non-profit international organization that shares a similar background and mission with The Florida Priory. Both organizations trace their histories to the eleventh century and provide charitable and humanitarian services, however, The Florida Priory is a chapter of an ecumenical Christian organization not affiliated with the Catholic Church. Its headquarters is in West Palm Beach, Florida.
SMOM alleged that The Florida Priory had infringed on five of its registered trademarks including its cross and shield imagery. The organization also alleged that The Florida Priory engaged in false advertising by claiming a historical background that belongs to the SMOM. Tom Brooke, a partner in Holland & Knight's Washington, D.C. office, led a team of attorneys in the defense of The Florida Priory.
In the end, the District Court dismissed all of the claims against The Florida Priory and instead, found that SMOM had obtained four of its trademarks by engaging in fraud during the application process. The court ordered those trademarks, which include the phrases, "Knights of Malta," "Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta, "Hospitallers of Saint John of Jerusalem," and "Order of Saint John of Jerusalem" cancelled.
The court found that SMOM ignored the rights of The Florida Priory and its parent international organization (which the court acknowledged had commenced operations in the U.S. 18 years before SMOM) in its PTO applications by stating that it knew of no other entity using the marks even though SMOM was aware of the parent organization and The Florida Priory. The court also found that since the two organizations share a common history prior to 1798, references to that history are appropriate and do not constitute false advertising under The Lanham Act.