The Arbitration Practitioner’s Series by MKBAC: Arbitrability of Trademark Disputes - Part III

Continuing from the last part, we shall now look at other possible disputes concerning assignment agreements.

Possible Dispute

Clandestine registration and use of mark similar or identical to Subject TM by assignor.

In the above example, it is plausible that the assignor may attempt to circumvent adjudication by arbitration by stating that that since its mark is dissimilar and / or that the goods / services are dissimilar, the dispute is not arbitrable as arbitration can only be invoked for similar mark and similar goods, depending on the construction of the clause.

Illustratively, if in the example above, ‘Mr. A’ would have applied for ‘HavenZ’ for artefacts, then he may be able to successfully argue that the mark as well as the goods are dissimilar and outside the ambit of the clause and, hence, the same is non-arbitrable.

Possible Dispute

Receipt of payments for existing franchise / license agreements are continuously being received by the assignor.

Franchise and license agreements are agreements by which a franchisee / licensee is granted a temporary interest in the Subject TM which is a right to use the Subject TM (and business system, in case of franchise agreement) for the purpose and in the manner specified in the agreement. Unlike assignment agreements, these agreements have an expiry period, and may either be exclusive or non-exclusive.

The possible disputes that can arise in respect of franchise / license agreements are provided hereunder:

Possible Dispute

Franchisor / Licensor wrongly represents itself to be the proprietor of the Subject TM.

Possible Dispute

The Franchisor / Licensor has granted franchise / license to another third party (in case of exclusive franchise / license)

In the next part, we shall continue to look at other possible disputes concerning franchise/license agreements

Manmeet Kaur Sareen completed the LL.M. course in intellectual property law from University of Cambridge and currently runs her independent law practice in New Delhi.