Taking back exclusive rights from distributors and agents

New York, September 2015

www.boetticher.com

© von BOETTICHER Rechtsanwälte Partnerschaftsgesellschaft mbB

BERLIN MÜNCHEN

Taking back exclusive rights from distributors

and agents

Dr. Holger Altvon BOETTICHER Rechtsanwälte


BERLIN MÜNCHEN

Grant of distribution rights

Right to promote, market and sell the products from the brand owner within the territory

typically combined with a license grant

Right to use IP Rights of the brand owner (Trademarks, Design and Copyrights)


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Legal problems following termination

What happened to remaining stock, marketing materials, labels etc.?

(P) Risk of abuse

Contractual Solutions:

• Grant of selling-off period

• Right to purchase back

• Obligation to return or destroy


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What happened to Sublicenses?

The exclusive licensee has the right to grant sublicenses

(P) The termination of the license does not automatically result in a termination of the sublicense (cf. e.g. German Federal Court of Justice, I ZR 24/11, 09/07/2012,

Take Five)Contractual Solutions:

• Exclusion of right to grant sublicenses or right to reserve approval

• Exceptional right to termination for the sublicense agreement


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What happened to (trademark) rights acquired by use ?

The licensee might have acquired trademark rights in the distribution territory on basis of using the mark on the market.

(P) Licensee can try to interfere brand owner’s business and brand owner cannot invoke on these rights against third parties

Contractual Solutions:

• Obligation to transfer possible rights acquired by use

• Obligation to provide relevant proof of use


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The “agency” problem

A sales agent acts on behalf of the brand owner, introducing the products to potential buyers, in exchange for a commission based on business deals arranged for the brand owner.

(P) Upon termination the agent has a right to compensation (e.g. pursuant Sec. 89b German Commercial Code), including a right to inspection the books of brand owner

Contractual Solution:

• Choose another distribution model


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Dr. Holger AltPartneremail: [email protected]

•Intellectual Property Law

•Fashion Law

•Anti-Counterfeiting Strategies

•License & Distribution Law

BERLINOranienstraße 16410969 BerlinT +49 / 30 / 61 68 94 03F +49 / 30 / 61 68 94 56

Thank you for your attention.

BERLIN MÜNCHEN

Business

Taking back exclusive rights from distributors and agents