Trademark licence agreements: some clarifications from the IP Court of Milan
On 29 March, the Milan IP Court issued an interesting judgment (no. 3925/2016) concerning trademark licence agreements, which clarified certain principles relating to their execution and validity.
One of the parties in the dispute claimed to have concluded a licence agreement for consideration and therefore was entitled to the payment of the consideration, and the other party claimed to have concluded an agreement without consideration and therefore was not required to pay anything; all of this against an exchange of drafts of contract that had not been followed by the signing of the final agreement, but which led to the licensee using the trademark anyway.
In the judgment under review, the judges first of all recalled that “the trademark licence agreement is free in form and can be concluded verbally as well as for concluding facts. Proof of that agreement can also be provided by witnesses or presumptions, provided they are able to show the agreement reached”. This kind of agreement, they added, is normally an onerous contract involving reciprocal duties, in which the licensee shall pay a fee in consideration for authorisation to use the trademark. This, said the judges, “leads to exclude that it is free of charge, which would entail an unjustified enrichment of the licensee“, unless otherwise agreed upon by the parties.
In this context, it was the licensee who had the burden to prove that the contract was free of charge, but did not offer any evidence of it. On the contrary, a draft of the licence agreement had been filed in court, sent by the licensor to the licensee via email, which envisaged a specific fee. Although the licensee denied that it had received the draft and accepted it, the judges believed instead that it had received and accepted it for conclusive facts, based on the following considerations:
as regards the draft, “although not having the sender’s advanced electronic signature, ‘it can be freely assessed by the court, taking account of its objective characteristics of quality, safety, integrity and immutability’ (see art. 21 of Legislative Decree no. 82/2005)”;
as regards the receipt of the draft by the licensee, “the e-mail address to which the plaintiff sent the draft coincides with that used on other occasions in the exchange of correspondence between the parties. It thus coincides with the one ‘declared’ by the defendant, hence the message sent to it is ‘deemed to have been delivered to the addressee’ (see art. 21 Legislative Decree no. 82/2005 and art. 1(1)(b) of Presidential Decree no. 137/2003)”;
the licensee had also implemented one of the draft’s provisions, i.e. the one that stipulated that it had to send to the licensor, for its approval, the draft designs of the products bearing the trademark;
the licensee had used the trademark following receipt of the draft.
Based on the above, the Court found that the licensor was entitled to obtain payment of the consideration agreed in the draft. It therefore condemned the licensee to pay that amount plus the licensor’s legal costs.