1. Free Legal Help, Legal Forms and Lawyers. TheLaw.com has been providing free legal assistance online since 1995. Our most popular destinations for legal help are below. It only takes a minute to join our legal community!

    Dismiss Notice

Trademark Ownership and licensing

Discussion in 'Copyright, Trademark, Patent Law' started by Rhino, Jun 21, 2001.

Thread Status:
Not open for further replies.
  1. Rhino

    Rhino Law Topic Starter New Member

    Messages:
    1
    Likes Received:
    0
    Trophy Points:
    0
    We are a South African Company involved in a TM dispute with an USA company.

    History:
    My father formed a Joint Venture in 1988. The JV formed a BVI company who owned the USA corp. My father licensed the BVI company to use his TM who in turn licensed the USA company. In 1990/91 the relationship soured and we now have a ruling that the agreements terminated then. The reasons for termination were not decided or ruled on.

    The license agreement were subject to terms that were not met.

    The USA company carried on using the TM and is still using it today. We used the TM again from 1995 to the end of 1997.

    The current action started in 1998 in California when the USA company took action against us for amongst other TM infringement. We then according to the agreement got the case reffered to arbitration in London.

    Our dispute is now currently being arbitrated in London using US substantive law. The tribunal is hearing the TM issues next.

    We know that who had first use of the TM in the USA owns the TM.

    We are saying that because the USA company was licensed by us the use in 1988 to 1990/91 accrues to our benefit. They are saying that it is their use and therefor they own the TM.

    They are saying that even if we are correct; because of equitable defences such as laches, acquisensce and estoppel we are prevented from stopping them to use the TM. I have found a case that states that they are only allowed to use equitable defences against us if we took action gainst them as after all it is a defence!

    They are not allowed to prevent us as the Senior User from trading using the TM unless they can show that we have abandoned the mark. If we can show "inevitable confusion" our claim can be revived from estoppel. This is a stronger showing than "a likelihood of confusion" as with normal TM infringement cases. Confusion is already taking place with us getting enquiries and complaints from the USA.

    Your light on this subject will greatly be appreciated. :)
     
  2. Michael Wechsler

    Michael Wechsler Administrator Staff Member

    Messages:
    9,016
    Likes Received:
    546
    Trophy Points:
    113

    I'm sure that you have an experienced lawyer handling this and there are a number of facts here that I obviously don't have. I'd be surprised if there wasn't a clause in the contract stating that (1) The licensee will not challenge the ownership of the trademark by the licensor or commit an act that would damage the trademark, and (2) all rights/goodwill that flow from the license are to the benefit of the trademarkholder. I'm not sure about the specifics here regarding US recognition of the foreign trademark and it's application nor am I convinced that their defenses apply for the same reasons. It would seem to me that the best argument would flow directly from the contract to which they consented and the application of law regarding usage is not necessary.
     

Share This Page

Thread Status:
Not open for further replies.