GBLP assisted Kimberly Clark with trade mark licensing and registration of trade
mark licence agreements with the Russian Intellectual Property Office.
This includes drafting and negotiating franchise agreements, know - how licence agreements and trade
mark licence agreements.
Not exact matches
Article 8 (2) expressly enables the trade
mark owner to invoke its trade
mark rights against a licensee where the licensee breaches certain provisions in the
licence agreement.
Therefore the ECJ concluded that a trade
mark owner can take infringement action against a licensee who breaches a condition in the
licence agreement which falls within Art 8 (2).
However, the ECJ stated that the
licence agreement does not necessarily constitute the absolute and unconditional consent of the trade
mark owner to the licensee putting the goods bearing the trade
mark on the market.
The ECJ summarised by ruling that, where a licensee puts luxury goods on the market in contravention of a provision in a
licence agreement but must nevertheless be considered to have done so with the consent of the trade
mark owner, the proprietor of the trade
mark can rely on such a provision to oppose a resale of those goods on the basis of Art 7 (2) of the Trade
Marks Directive only if it can be established that, taking into account the particular circumstances of the case, such resale damages the reputation of the trade
mark.
The action was appealed to the French supreme court (the Cour de Cassation), who stayed proceedings and referred three questions to the ECJ concerning whether a trade
mark proprietor can invoke trade
mark infringement principles to prevent the sale of licensed goods to discount stores where the
licence agreement prohibits such sales and the further commercialisation of the goods.
Karen deals with all aspects of intellectual property law, both contentious (including acting for parties in the High Court, IPEC, UKIPO and EUIPO) and non-contentious matters (including drafting assignments,
licences and non-disclosure
agreements) in the fields of trade
marks, passing off, copyright and design rights.
It entered into a
licence agreement with Trump
Marks Toronto LP to use the Trump name and trademarks for the building, which would be called Trump International Hotel & Tower.