Italy MRAIO VALENTINO Corp. (hereinafter short as “VALENTINO Corp.”) is involved in license dispute in China and has caused lawsuit.
According to the introduction, in April 2008, Zhejiang Hangzhou Manlong Guiyu Trading Co. (hereinafter short as “Guiyu Co.”) sub-licensed Fujian Aoke Shoes & Apparels Co. (hereinafter short as “Aoke Co.”) to use two "VALENTINO" trademarks licensed by VALENTINO Corp., designated on footwear commodities, and authorized Aoke Co. to produce and sell male shoes and male leisure shoes bearing words and device trademark “VALENTINO” in mainland of China, Hong Kong and Macao. Afterwards, Guiyu Co. did not submit trademark license agreement to China Trademark Office (hereinafter short as “CTO”), thus the products of Aoke Co. could not put into the markets for sale. Therefore, Aoke Co. refused to pay subsequent license fees. In October 2008, Guiyu Co. filed lawsuit against Aoke Co. In the trial, Aoke Co. submitted the trademark license agreement recorded in CTO to the court. According to this agreement, the date that VALENTINO Corp. authorized Guiyu Co. to use the abovementioned trademarks is March 21, 2009, and VALENTINO Corp. did not authorize Guiyu Co. to produce or sell the above mentioned footwear products in Hongkong and Marco, nor did authorize Guiyu Co. to use trademark “VALENTINO” on leisure shoes. In addition, Clause 16 of this agreement indicated that “without prior written authorization of MRAIO VALENTINO Corp., the licensee (Guiyu Co.) shall not sub-authorize any licenses under this agreement”. At the same time, in the written authorization letter Guiyu Co. submitted to the court, also indicated that "without the prior written permission of trademark owner, Guiyu Co. shall not sub-permit a third party to use trademark concerned". According to Aoke Co., in August 2009, Guiyu Co. obtained a new written statement from VALENTINO Corp., however it had exceeded the time limit for adducing evidence at that time. Afterthat, the people's court of Xihu District organized a cross-examination on this written statement. According to this written statement issued by VALENTINO Corp., Guiyu Co. only has right to produce and sell footwear products bearing the trademark concerned and has not right to sub-permit the third party to use. Up to the present, this case has been accepted by court for 17 months and is still pending.
Abstracted from “China Intellectual Property New 2010.3.10 Issue No. 274”
"VALENTINO" trademark license dispute affords us lesson that when licensing other person to use registered trademarks, registered trademark owners shall pay great attention on trademark license agreement and recordation thereof. Trademark owner can not sign a simple or generalized licensing contract. In licensing contract, the scope of authorization and the sub-permission access of the licensee shall be expressly appointed to avoid that some of the licensee may use its trademark beyond licensing authority.
