non-exclusive licences for a single use

non-exclusive licences for a single use

1. A created a logo over a year ago and in respect of it, via the internet, advertised for sale non-exclusive licences for a single use, for USD 30.
2. He made six such sales to various customers, through the website that hosted his logo and advert.
3. B (my client) created a new logo for C. B says that it came up with the logo through an independent internal creative process.
4. The new C logo was launched this summer. A trade mark registration process in respect of the logo was initiated around this time.
5. It came to B’s attention that the logo they created for C was very similar to A’s (and also to another company D’s).
6. For commercial reasons, B felt embarrassed, and wanted to get A’s logo off the market by the quickest means possible.
7. Using a private email adress, B, approached A proposing some kind of deal.
8. After an exchange of a couple of emails with A, B then approached us.
9. Our initial advice was that the quickest most practical way to get A’s logo off the market is indeed to purchase from A’s all rights in respect of his logo.
10. A proposed EUR 1,000; B is minded to agree, and wishes now to document the agreement.

We therefore have two basic considerations:

a) practically how to close and document the deal between A and B; and
b) what broader advice to give B regarding the situation as a whole, including without limitation the respective parties’ rights (including the six licensees) in respect of the different logos, and what further action or protections (including registrations) he might consider.
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