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Lessons to be learnt for trade mark licensorsLessons to be learnt for trade mark licensors

» Posted on: 1 July 2014

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A recent decision by the World Intellectual Property Organisation's (‘WIPO’) Arbitration and Mediation panel for disputes regarding rights to domain names serves as food for thought for those licensing rights of use to their trade marks.

The case concerned heavyweight accountants, Baker Tilly, who operate a network of independent and locally-owned member accounting firms. One former network member was Baker Tilly MKM (‘MKM’) of Dubai which entered into a licence arrangement with Baker Tilly lasting from 2008 to 2013. The terms of the licence prevented MKM from adopting or using, amongst other things, any trademark or domain name which was confusingly similar to the Baker Tilly registered mark, except if it was in a ‘Permitted Form’. For this purpose, the document provided ‘Baker Tilly MKM’ was a permitted form. MKM had registered the domain name, www.bakertillymkm.com (‘Domain’) at that time.

When the arrangement soured and came to an end in 2013, Baker Tilly took issue with the domain, claiming it was confusingly similar to the mark and that whilst MKM used to be a licensee, it was never permitted to register the domain and, in any event, the relationship had now come to an end.

In coming to the conclusion that Baker Tilly had not done enough to prove MKM had registered the domain in bad faith for the purpose of the WIPO policy, the WIPO panel noted the lack of clarity as to whether the domain could be considered a Permitted Form under the terms of the licence. It also appeared to be persuaded by the fact Baker Tilly had not taken issue with the domain until after the relationship had terminated and, finally, noted that the issue regarding the domain appeared intertwined with a larger claim by MKM suggesting it had rights in the trade name Baker Tilly MKM regardless of the relationship with Baker Tilly terminating an issue which would need to be addressed before the courts.

Whilst not a decision of a court, the case serves as a useful reminder to those licensing their trade marks to be very clear as to the extent of use they are willing to permit, and to think laterally about registration issues particularly concerning acquisition of rights to space in the virtual online community. Likewise, if you have concerns that your licensee is acting beyond the scope of their authority during the term of the licence, act fast.

Taylors' Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).

If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email attony.catterall@taylors.co.uk.

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