THE BOTTOM LINE
- Priority of Agreements: An earlier, exclusive license agreement will likely prevail over a subsequent one, even if the first agreement is imperfectly drafted. Courts may look past formal errors to the clear intent of the parties at the time of signing.
- Authority is Key: The authority of the individual signing a deal can be more important than the specific company name listed as the “licensor.” If the person holds the ultimate rights (e.g., as patent holder and director of the trademark-holding entity), their signature can bind the IP.
- Risk for Second Licensees: Companies entering into license agreements must perform thorough due diligence. This ruling shows that accepting a license from a party that has already granted exclusive rights to someone else, even if they claim the first deal is void, is a significant commercial risk.
THE DETAILS
This case revolved around the intellectual property rights to an innovative insulation product. Initially, the inventor and a group of business partners intended to exploit the product through a new company (the “Defendant”). In February 2025, the inventor—who personally held the patent and was the director of the company holding the trademarks—signed an agreement granting the Defendant an exclusive 5-year license to the patent, trade name, and associated brand rights. However, a key potential shareholder (the director of the “Claimant” company) backed out of the partnership shortly after.
Following the breakdown of the planned collaboration, the inventor’s group attempted to terminate the Defendant’s license and, in June 2025, signed a new exclusive license agreement with the Claimant. The Claimant then sued the Defendant for trademark and trade name infringement, arguing that the Defendant’s initial license was invalid. Their core argument was technical: the licensor named in the first agreement was one of the inventor’s companies, which didn’t formally own all the IP rights at that moment. The Claimant asserted that only their own, later agreement was legally sound.
The Gelderland District Court rejected the Claimant’s arguments, taking a pragmatic, substance-over-form approach. The court found it evident that when the first license was signed, all parties—including the inventor who held the patent and controlled the trademark-holding company—fully intended to grant a comprehensive and exclusive set of rights to the Defendant. The court noted that the inventor himself signed the agreement and that the deal was made without lawyers, excusing some of the formal drafting imperfections. Because a valid, exclusive license had already been granted to the Defendant in February, the inventor and his companies no longer had the authority to grant another exclusive license to the Claimant in June. The first agreement stood, leaving the Claimant without enforceable rights against the Defendant.
SOURCE
Source: Rechtbank Gelderland
