- 32 -
great deal of know-how and expertise. These components are of
greater significance to customers than the name or trademark of
the delivery entity. Generally, a delivery business’ trade name
or trademark will have less value when separated from the
delivery infrastructure. On occasion, an established delivery
company acquires another operating delivery company solely for
its operating infrastructure, and the acquired company’s name is
phased out and/or discarded.
As part of the first stage of the transaction with the
foreign investors, the parties agreed to a reservation of rights
agreement in which an intermediate entity was used to transfer
the DHL trademark to Newco (or DHLI Bermuda) and Elan
Operations B.V. (Dutchco). The reservation of rights agreement
provided that nothing contained in it shall be construed as an
assignment or grant to the intermediate entity of legal or
beneficial ownership in or to the trademark, it being understood
that Dutchco is the owner of all right, title, and interest in
and to the trademark in the United States, and that Newco is the
owner of all right, title, and interest in and to the trademark
outside the United States, in each case subject only to the
rights reserved to the intermediate entity during a so-called
reservation period and thereafter under a license period. Use of
the DHL trademark by petitioner and its related domestic entities
inured to the benefit of Dutchco and Newco, and the validity of
trademark ownership was incontestable worldwide. While the
Page: Previous 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 NextLast modified: May 25, 2011