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name “DHL” and used that name in its business in the United
States; (2) DHLI licensed the name “DHL” from DHL and carried on
business as a document courier on a worldwide basis; and (3)
DHLI, with DHL’s consent, appointed Ops B.V. as its agent to
establish and improve the network throughout the world, excluding
the United States. On November 15, 1980, DHLI and Ops B.V.
executed a “Variation Agreement” modifying the 1979 agreement
with DHL’s consent.
Geoffrey Cruikshanks (Cruikshanks) was hired in 1982 as
legal counsel for the DHLI portion of the DHL network. On August
1, 1983, Cruikshanks asked Lupo if DHL would sell DHLI the rights
to the DHL trademark outside the United States. Lupo responded
that the worldwide rights to the trademark could not be sold
without DHL board of directors and shareholder approval, but the
rights for DHLI to use the trademark only in Central America
could be transferred for $100,000. DHL transferred the Central
America trademark rights to DHLI for $100,000.
In 1983, Cruikshanks undertook a worldwide registration
program of the DHL trademark. Although Cruikshanks had been
advised in April 1983 by the DHL general counsel that the DHL
name should be reflected in connection with the registrations
worldwide, that was not done. Cruikshanks hired John Caisley
(Caisley) to register the trademark. Caisley was not informed
about the 1974 MOA and DHL’s agreement with DHLI concerning the
DHL trademark, and he registered it in DHLI’s name in various
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