The scope of trademark use in contractual relations between partners: a point not to be overlooked!

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When it comes to UDRP (Uniform Domain-Name Dispute-Resolution Policy) proceedings, in addition to the three cumulative conditions that must be met for a complaint to be upheld (domain name that is identical or similar to the disputed domain name to a trademark held by the complainant; the respondent having no rights or legitimate interests; registration/use of the domain name in bad faith), practice shows that the framework of contractual relations between partners is also important, particularly when it comes to trademark use.

It may happen that a business partner reserves a domain name for its own use that relates to a trademark protected by the other party. In the event of a breakdown in the relationship, the issue may arise as to how far the business partner is entitled to continue using the domain name in question. In order for the owner of the trademark rights to be able to request that use be stopped, it is essential to define in the contractual framework, (i) whether or not a partner may use the trademark in question or register it in other forms, (ii) on what type of medium this use is possible (website, social networks, etc.), or (iii) in what form the protected trademark may be reproduced/used (as a domain name, company name, trade name, etc.). Simply not addressing this issue in advance can prevent a trademark owner from winning a UDRP case (forcing them to take the often more costly and time-consuming legal route to recover the domain name in question), unless they can demonstrate bad faith on the part of their former partner, who continues to use their trademark as a domain name despite the ending of their relationship.

So, generally speaking, when you authorize your partner to use your brand, it’s important to plan ahead for the end of the contractual relationship right from the start, and ideally, in the case of domain names or media such as websites, to keep control over management. For example, it is entirely possible to agree that your partner will have access to the website for supplying products/services, with a certain freedom to integrate predetermined elements, while arranging for the brand owner to keep administrative and legal management (of the domain name concerned, the website and its hosting, for example). This protects your intangible assets, while also making a possible commercial argument, with the brand owner making tools available to their partner.

Don’t hesitate to contact the MIIP teams to draft or review your contracts on intellectual property and IT aspects.

 Charlotte Urman – Trademark Attorney & Diana CUNHA LOPES – IP Lawyer