International law firm Bird & Bird has successfully represented Zennar Limited, owner of the Rockfish Weatherwear fashion brand popular in Korea, in a significant High Court dispute concerning the termination of a long-term exclusive trade mark licence agreement.
The High Court ruled in favour of Zennar on all substantive issues, confirming that the company was entitled to terminate a 20-year exclusive trade mark licence agreement following a series of contractual breaches by the licensee. The Court also dismissed the defendant’s counterclaims in their entirety.
The dispute centred on whether Zennar had valid grounds to terminate the licence after identifying breaches relating to confidentiality obligations, infringement reporting requirements and enforcement activities. The proceedings also examined important issues relating to implied contractual terms, good faith obligations and relational contracts.
The case had a significant international dimension, with issues of Chinese trade mark law forming part of the defence. Bird & Bird’s UK team worked closely with colleagues in China to support the successful outcome.
The judgment enables Zennar to move forward following the termination of a long-term commercial arrangement that still had 15 years left to run.
Louise Sargeant & Jae Park, who led the Bird & Bird team, said: “This is a fantastic result for our client and the culmination of a huge team effort. The case involved complex contractual and trade mark issues across jurisdictions, and our teams in the UK and China worked incredibly closely throughout. We won because we had an exceptional team, and we could not be prouder of everyone involved.”
Jerry Kim of Zennar said: “I cannot thank the team enough for your incredible hard work, dedication and support throughout this long and challenging journey. I will never forget everything you have done and all the effort we have put in together. You are truly the best team I could ever have hoped to work with, and I feel incredibly lucky to have had you by my side.”
The Bird & Bird UK team included Jae Park, Louise Sargeant, Emily Mason, Quinn Liang, Gypsy Barber, Charlotte Avenarius and Amy Weir-Simmons, with Benet Brandreth KC and Miruna Bercariu acting as counsel. The China team included Dorie Wong, Nicole Liang, Olivia Zhao, Yue Gao, Fency Yuan, Siyang Song and Tim Su.
