Are arbitration clauses a good idea? This post is not going to resolve this longstanding debate but it will highlight some of the intended (and unintended) consequences of an arbitration clause.
The use of arbitration clauses in trade mark coexistence agreements was recently considered by the UK's IP Enterprise Court (IPEC) in Lifestyle Equities CV & Anor v Hornby Street (MCR) Ltd & Ors.
Lifestyle Equities owns six EUTMs and one UKTM (post Brexit that is 7 UKTMs) for BEVERLEY HILLS POLO CLUB (see picture below). It is suing the defendants over the use of the SANTA BARBARA logo (also pictured). However, a 1997 coexistence agreement between Lifestyle Equities’ predecessor and one of the defendants provides that any disputes should be resolved by arbitration in Los Angeles in accordance with the rules of the American Arbitration Association.
What does this coexistence agreement mean for Beverly Hills?
The IPEC judge (HHJ Hacon) found that by 2015 Lifestyle Equities had become party to the 1997 agreement. This is because in 2015, Lifestyle Equities relied on the coexistence agreement when it filed a trade mark application in Mexico. The judge held that the issues in this case are inextricably intertwined with the agreement.
The judge therefore granted the defendants’ request to stay the action pending the outcome of any arbitration. It's over to LA for the next installment.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com#trademark #brand #bentley #rights #fashion #clothing #fashionlaw #IP #intellectual property #law #lawyer #fashionlawyer #polo#brandextension #luxury
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