Hermès fails to stop ‘John Lobb’ TM suit
The English High Court has refused to strike out a lawsuit between UK bootmaker John Lobb and a subsidiary of Paris fashion company Hermès concerning the ownership of trademarks.
The two companies first signed an agreement in 1992 that Hermès-owned company John Lobb SAS (JLSA) would manufacture, promote and sell footwear bearing the ‘John Lobb’ mark throughout the world, with John Lobb Limited (JLL) maintaining the right to continue using the mark in the UK.
The agreement was renewed in 2008.
JLL claimed in a May 22, 2020, suit that it was not bound by the 2008 agreement, arguing that the agreement was void ab initio for common mistake—meaning that it should be treated as invalid from the outset.
JLSA—a Hermes-owned company that was incorporated into the Lobb family in 1972—asked the English High Court to dismiss the lawsuit in its entirety or get an order granting the defendant judgment on the claim.
On April 24, the court refused JLSA’s application, meaning the lawsuit will be tried in court.
The court judge, Deputy Master Matthew Marsh wrote: “...it is not possible to construe the 2008 agreement as containing a warranty by the claimant that the defendant is the legal and beneficial owner of the mark, or for the contract be taken to allocate the risk in the event that the assumption is wrong.
He added: “The contract does not go on to specify what is to happen if that understanding proves to be wrong.”
Ownership dispute
Under the 2008 agreement between the two companies, ‘John Lobb’/’Lobb’ word marks were registered for protection in several countries by JLSA, while JLL held the rights to the mark in the UK.
JLL issued a formal claim 12 years after the agreement was signed, seeking a ruling that the terms of the 2008 agreement are void, and acknowledgement that JLL is “beneficially entitled” to the ownership of the ‘John Lobb’ marks, save for those registered in France.
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