Often companies forget to include separate clauses in cooperation agreements about the use of trademarks. For example, may a distributor register domain names or social media accounts in which the trademark appears? Should these then be transferred free and immediately if the parties part ways?


In 2017, Kawasaki Motors entered into a verbal agreement with a third party. That party will offer insurance to owners of Kawasaki motorcycles. As part of the cooperation, the company is allowed to use the trademark and register domain names (in which the trademark appears).

In 2022, Kawasaki decides to end the cooperation, to which the user agrees. Then a discussion arises about the transfer of the domain name and the compensation the Respondent wants to receive. Meanwhile, the domain name <> remains active and Kawasaki motorcyclists can purchase insurance there.

Everything in these WIPO proceedings revolves around whether the Respondent has an interest of its own. Due to the termination of the cooperation, the Respondent no longer has the right to use the trademark. Not transferring the domain name is used as leverage to receive compensation. That is not legitimate. Use after termination of the agreement is use in bad faith. The domain name has to be transferred. If the defendant still wants compensation, then he should challenge the decision in civil court. The latter can then factor this into its judgment.


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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?