Lost in Translation

Trademark World, April 2010.

Licensing is one of the most effective ways to maximize the value of a trademark. It is also the easiest way for a trademark owner to expand internationally within a short period of time. Similarly, a trademark licensee obtains the marketing benefit of using an already well-established brand for its products. However, because trademark regimes differ from country to country, licensors and licensees may find that terms that they thought were clear can actually have multiple interpretations based on the differing national laws and practices of the parties.

The recent decision in Sunstar, Inc. v. Alberrto-Culver Co., 2009 U.S. Lexis 23759 (7th Cir. October 28, 2009) illustrates the type of language-based issues that can arise in cross border licensing disputes. In that case, Alberto-Culver, owner of the famous VO5 hair care trademarks, had licensed its marks in Japan to Sunstar, a well known hair care company in Japan. During the course of