Company: EU-based company manufacturing and distributing products throughout the EU and US
Industry: Drinks manufacturer
Uninterrupted use of a licensed brand and continued trading
This EU-based company manufactures, distributes, and sells a variety of own and licensed brand drinks throughout the EU and within particular US states, with an ambition to sell into additional US states and Asian territories. The client was referred by another client due to the experience and successful completion of projects in connection with trade mark acquisition, registration, and infringement. The client received advice and a strategy that enabled it to continue to use another’s registered trade mark within a particular market sector.
The (Pain Point)
The client manufactures its own range of drinks products, and has created and designed a number of key drinks brands to disrupt the soft drinks market. This includes the use of designers and marketing professionals to develop the look and feel of brand designs, and to register and protect those brands in relevant markets around the world. As part of its strategy it also licenses other brands. Over the years it has received industry recognition including international gold medals for excellence, and as a leader in sustainable manufacturing and packaging.
The Challenge Faced
The client had negotiated a particular trade mark licence as prepared and drafted by the owner of a part-registered trade mark. It was reasonably confident to undertake its own review and negotiation of the licence, already having a prior relationship with the owner, and a rudimentary knowledge of trade mark law. However, due to a change in management of the licensor the licence came under review and the client’s actual use of the brand questioned. This resulted in a dispute arising between the parties as to the original intention of the use of the brand and how the brand could be used in the future.
The licence itself had been drafted by the licensor, which was ambiguous in key parts of the agreement, leading to differences with interpretation. The risk to the client was that despite significant investment in brand design and market promotion it faced a real risk of only being able to use the brand in a vastly reduced way disproportionate to the level of investment undertaken.
I have worked with many businesses in connection with IP and those related issues faced by organisations based in the UK and overseas. In particular I have helped companies with trade mark matters throughout most of the world’s territories due to extensive experience and knowledge in this field.
The client needed to swiftly determine its own risk and to resolve the growing dispute due to increasing sales in key markets (which would be subject to a damages assessment in the event of a breach of the licence and potential trade mark infringement), loss of use of the brand, ongoing design and promotional costs in connection with the disputed aspects of the licence (wasted costs and risk of future wasted costs), and the possibility of additional costs to change and update its website, remove promotional campaigns from the market and to replace with new, amending its budget to accommodate for increased expenditure for its other brands to bridge the potential gap, and any compensation that may fall due to the licensor.
The client needed to understand its position quickly and did not believe it had the time to undertake a review of appropriately qualified legal professionals (no IP lawyers on its own panel) and so it reached out to selected members of its network. It also considered that due to the reputation of the UK legal profession, many of its markets operating within English-speaking jurisdictions, and all of its registered trade marks filed in the English language, that an English lawyer experienced within trade marks law was preferred.
I was known to one of the client’s trusted network on account of the particular work that I had undertaken for its own businesses, along with the successful completion of a number of trade mark and contract related projects.
It was important to listen and understand the client’s concerns and preferred outcome(s) taking account of its relationship with the licensor, its own reputation in the market-place, along with timing and deadlines to be observed. A review of documentation and in particular the licence agreement was undertaken within an agreed timeframe that suited the client. Clear and concise written advice was provided to the client in good time that included both practical and legal options, and to discuss those options directly with the client in order to agree a way forward.
The client was reassured and confident in being able to resolve the differences without the need to defend its position at court, and to confidently continue with its own preferred business strategy without having to pause or pivot before the matter was formally resolved.
- was able to continue to use the brand as it had intended;
- had not wasted design and marketing costs in accommodating a change to its licence;
- had not unnecessarily paused or pivoted its business in order to await an agreed outcome;
- avoided a reduction of its current and future income stream;
- avoided high expenditure and distraction to its business due to litigation;
- maintained its relationship with the licensor.
- Use an experienced and qualified lawyer to prepare and negotiate your licence agreements
- Consider risks to your business and not only appreciate what could go wrong, but how to avoid or mitigate against possible situations
- Use of unambiguous language, clear definitions, and certainty of aligned expectations within your contracts
- Suitable and comprehensive business contracts will enable you to quickly and effectively manage potential disputes with less distraction to your business and reduces future costs and risk