Late last year, the owners of the VEUVE CLICQUOT luxury brand in the UK and EU brought an
action for trade mark infringement and passing off against the parties collectively licensed to produce and sell high quality polo clothing and merchandise bearing the VEUVE CLICQUOT marks in connection with a British Open Polo Championship event. The claimants sought and were awarded damages. From 2007 – 2010, the First Defendant was an official supplier to the British Open Polo Championship event pursuant to a licence agreement (negotiated annually) with the Second Claimant for the production, promotion and sale of garments branded with the trade marks owned by the First Claimant. The dispute concerned the scope of the consent given for use of the VEUVE CLICQUOT marks and the purposes for which that consent was given. The claimants contended that their consent to the marks' use was limited to the duration of the event and that any production, promotion and sale of merchandise bearing the marks outside of this period amounted to both trade mark infringement and passing off. The defendants claimed to have a perpetual, interminable right to promote themselves as having been an official supplier to the event from 2007 to 2010, as that was a historical fact, so they could use the marks for that purpose. The 2007 agreement contained no limitation on the production, promotion or sales of branded merchandise. However, the 2008 to 2010 agreements incorporated an explicit and unambiguous term that limited consent to the sale of branded merchandise and the communication and advertisement of the defendants’ “official supplier” status in their shops
for the period of the event only, and not before or after those dates. As the EUTM was filed in January 2008, it was held that this mark had been infringed by the defendants' sale of branded merchandise and the promotion, offering and exposing of such goods for sale after that date except within the period of the British Open event. The defendant’s actions were also judged to have amounted to passing off. The defendants could not unequivocally demonstrate consent from the claimants for their use of the marks outside of the event period. Damages were calculated based on what the judge felt was an appropriate licence fee between two willing parties to an agreement. This case serves as a useful reminder for licensors to ensure that licence agreements are clear on the scope and duration of any consent granted regarding use of the brand, as it was in this case. Licensees are reminded that they cannot automatically assume they can continue using a brand following the termination of an agreement, even to present “historical fact”. Stobbs has extensive experience in licensing agreements. If you think you could benefit from our advice, please feel free to get in touch.
