Keventer Spat To Hit Trademark Usage

The Keventer Agro-Seagram dispute will have a direct bearing on the Seagram-Dole agreement as regards the right to use the Dole trademark on food products in the India.

The issue has assumed importance as the Calcutta-based Keventer Agro Ltd. has obtained a stay on assigning if the Dole trademark by the Canadian multinational The Seagram Company Ltd, to any Indian party.

The Calcutta High Court has restrained Seagram from conferring on any Indian party the right to use the Dole trademark on a petition filed by Keventer Agro Ltd. The case is now slated to be heard by the court on May 12.

 

But behind this Keventer-Seagram dispute lies an important issue of Seagram's agreement with Dole Food Company Inc by the strength of which Seagram will be entitled to use the Dole trademark in respect to fruit and vegetable based beverages, except in Japan.

In the Master License Agreement signed on May 19, 1995, by Dole Food Company as licensor on the one hand, and Duo Juice Company, a wholly owned subsidiary of Tropicana, and The Seagram Company Ltd of Canada as licensees on the other, specific clauses have been included to protect the Dole trademark.

Dole retains the trademark, though a part of the Dole business has been shed to Seagram. The master license agreement has stated that " the parties acknowledge and agree that as between the license (Dole) and licensees (Tropicana subsidiary and Seagram) the licensed trademarks are the sole and exclusive property of the licensor."

Further, the agreement said "Each licensee acknowledges and agrees that it shall not acquire any right, title or interest in or to the licensed trademarks as a result of this license agreement .... and that all use of the licensed trademarks by the licensees and all goodwill generated thereby shall insure to the benefit of the licensor."

While filing a case against Seagram, Keventer Agro has made Dole a respondent in addition to five other parties, including Tropicana Products Inc of Florida. But the onus of defending the Dole trademarks lies with Seagram , as per the Master License Agreement.

In January 1993 Keventer Agro Ltd. struck a memorandum of understanding with Dole Food Company for developing, marketing and selling fruit/vegetable-based beverages in India by setting up of a production facility at Barasat in West Bengal.

After Dole sold out its fruit and vegetable-based beverages business to Seagram, Keventer reached an agreement with Seagram for a joint venture company with Seagram holding 51 per cent of the equity and Keventer 49 per cent. Keventer Tropicana Pvt. Ltd was registered as the joint venture company in October 1996.

But before the project was finally taken up Seagram wanted to change the equity pattern with 75 per cent for them leaving 25 per cent for the Indian collaborator, i.e., Keventer Agro. Moreover, Seagram indicated its preference for Nagpur in Maharashtra as the site for production facility.

Keventer Agro failed to agree to this new stand of Seagram and suspecting that the multinational company may pick up Maharashtra Agro to the joint venture project replacing Keventer it filed the case seeking to restrain Seagram from entering into any agreement with any Indian company from producing food products and assigning the Dole trademark.

Dole trademark has thus assumed an important point of dispute between Keventer and Seagram.

This has relevance to the Dole-Seagram agreement on trademark. The agreement has mentioned that the "licensor (Dole) will have the right in its sole discretion to take whatever steps it deems necessary or desirable to protect the licensed trademarks from any such infringement, unfair competition or other harmful or wrongful activities of third parties and shall have the right to control any litigation or other proceeding undertaken by it for any such purpose."

In view of the court proceedings between Keventer and Seagram it will be watched keenly what stand Dole takes as its trademark is sought after by Keventer and Seagram wants to change the terms of agreement before allowing the Dole trademark to Keventer Tropicana Pvt. Ltd, the joint venture company.