When a dis­trib­u­tor­ship ends – who gets the nam­ing rights?

Intro­duc­tion

When an exclu­sive dis­trib­u­tor­ship between an over­seas prin­ci­pal and an Aus­tralian dis­trib­u­tor ends, the issue of the own­er­ship of intel­lec­tu­al prop­er­ty gen­er­at­ed or used dur­ing the dis­tri­b­u­tion peri­od should log­i­cal­ly be addressed in the dis­tri­b­u­tion agree­ment. Unfor­tu­nate­ly, this issue is often not addressed ade­quate­ly and dis­putes can arise between the prin­ci­pal and its ex-dis­trib­u­tor with respect to the own­er­ship and use of brands and names. The main heads of such dis­putes can include trade marks, rep­u­ta­tion, domain names and con­trac­tu­al issues.

Trade marks

It is usu­al prac­tice for the trade marks of import­ed goods to be reg­is­tered in the name of the over­seas prin­ci­pal. How­ev­er, if these trade marks have not been reg­is­tered in Aus­tralia by the prin­ci­pal, the Aus­tralian dis­trib­u­tor may be tempt­ed to reg­is­ter these marks itself. Such a prac­tice by