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ICC Award No. 6363, YCA 1992, at 186 et seq.

Title
ICC Award No. 6363, YCA 1992, at 186 et seq.
Content

186

Final award in case no. 6363 of 1991

Facts

Claimant is a Netherlands Antilles corporation effectively wholly owned by a Dutch company (the Dutch company). The Dutch company, in December 1972, assigned to claimant the "right to exploit in all countries outside Europe all secret or confidential data, knowledge, unpatented inventions, discoveries, technology and/or experience directly and specifically connected with" a certain biological waste water or sewage treatment system.

In 1974, a Middle Eastern Country's invitation to tender for a sewage treatment installation at a city in said country (the site) specified the use, of the above-mentioned type sewage treatment system.

On 8 November 1978, claimant and defendant, the construction company which would carry out the project, concluded a "Know-How License Agreement Concerning a Sewage Treatment Plant at the Site" (the 1978 Agreement). The 1978 Agreement was governed by Netherlands Antilles law and disputes were to be settled by ICC arbitration in Zurich. On the same date, these two parties also signed an addendum to the 1978 Agreement which was an 187 integral part thereof. The addendum provided for a discount in the licensing fee in return for pre-payment.

On 20 May 1980, the claimant concluded a contract (the 1980 Agreement) with a company of the Middle Eastern Country (ME company) having its registered offices in the capital. The contract, inter alia, granted the ME company the exclusive non-transferable right and license to sublicense and exploit the waste water and sewage treatment system know-how in the Middle Eastern Country (Art. 2). Under Art. 6, the claimant was also to assist the ME company in conducting negotiations with the sublicensee. Furthermore, the contract granted the ME company "the non-exclusive, non-transferable right and license to use the Trademark" (Art. 9). The 1980 Agreement was deemed to have taken effect on 1 January 1980 (Art. l l) and was to be construed according to the law of the ME Country.

In the beginning of 1981, claimant discovered that defendant had been awarded the contract for an extension of the waste water treatment plant. The ME Company inquired about the extension with the defendant, as the 1978 Agreement provided for a license fee in case of extensions as well. On 10 February 1981, the defendant's project manager wrote to the ME company that the construction of the sewage treatment plant there was near completion and acknowledged that defendant had been awarded the extension. The letter requested a meeting to discuss the payment of the "fee to be due". On 28 February 1981, the ME company sent a telefax to the defendant's project manager waiving payment of inflation increases in return for payment of the license fee for the extension by 11 March 1981. On 1 March 1981, claimant wrote to the defendant confirming the license transfer to the ME company and instructing that any additional royalties due to the enlargement of the facilities were to be paid to the ME company.

The defendant built three additional units; however, the license fee was not paid. After several attempts to negotiate a settlement failed, a case was initiated by the ME company before the Committee for Settlement of Commercial Disputes of the Ministry of justice (the CSCD Committee or the Committee).

The Committee's judgment recited extensively the sequence of the proceedings and then added:

"Based on the claim and answer to the claim which were heard by the Committee, and based on the letter of the Vice President of the National Center for Science and Technology stating that the plaintiff had no right to protection within the ME Country for reasons stated in the said letter, it has not been established to us that the plaintiff's claim against the defendant is valid."

188

Claimant initiated ICC arbitration regarding unpaid license fees against defendant on 5 October 1988, and the Terms of Reference became operative on 13 October 1990.

The Arbitral Tribunal held that there had been no effective transfer of claimants's rights regarding defendant to the ME establishment and that claimant had standing to pursue its claim on its own behalf. Furthermore, the Arbitral Tribunal held the defendant liable to claimant for the unpaid license fees.

Excerpt

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196

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II. RES JUDICATA

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201

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C. Estoppel Regarding Jurisdiction Claims

44 "The claimant contends that the defendant reversed its arguments after prevailing in the CSCD procedure and should be estopped, for it is acting in bad faith. Defendant seems to accept the doctrine of estoppel but says its position in the CSCD has been misinterpreted.

45 "Estoppel requires that the party claiming it has relied on a representation by another party with a resulting detrimental consequence to its own interests. There is no evidence that the claimant relied on the defendant's defenses to its detriment. Hence, estoppel issues are not raised here. However, this Tribunal agrees with a related and common position of both parties about the relevance of earlier statements which they both invoke. The Tribunal cannot ignore positions taken by the parties throughout the long history of their relationship, for they are indicative of their contemporary thinking and their conception of their legal rights.

46 "The issue of estoppel does not arise with regard to jurisdictional claims in this case."

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Referring Principles
Trans-Lex Principle: I.1.2 - Prohibition of inconsistent behavior
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