A trade mark licence is an agreement between the owner of a trade mark (licensor) and a person wishing to use the trade mark (the licensee) in a territory. The agreement will grant permission to the licensee to use the trade mark on mutually agreed terms and conditions contained in the agreement.
There are many benefits to licensing your trade mark rights. These include additional revenue streams (the use of the trade mark can be licensed to as many licensees as the owner sees fit, thereby creating additional revenue streams from each user), expansion to other territories that may otherwise unavailable to the trade mark owner and benefiting from the licensees manufacturing, distributing, sales or marketing capabilities to name a few.
Once the licence agreement is executed, brand owners and licensees alike should not only ensure that they comply with their obligations under the agreement, but both parties should be aware of any “housekeeping matters” that are applicable in the territory where the marks are being licensed.
By way of example, if brand owners are licensing their trade marks outside of Australia, some countries require a trade mark licence agreement be registered with the local government trade mark office in order to maintain validity of the trade mark and/or for the rights of the licensee to be recognised and/or to obtain royalties under the licence. Countries of note are Indonesia, Israel, PNG and Thailand.
In other countries, while not compulsory, it is advisable to record a trade mark licence with the local government trade mark office to assist with enforcement and demonstrating use in the relevant market.
If you are licensing your trade marks overseas, or are intending to, we strongly recommend you consider the local requirements as regards registration of the licence agreement to avoid loss of rights to your marks.
Take away?
We recommend that you review any trade mark licence arrangement you currently have in place to ensure all “housekeeping” matters has been taken into consideration. Where you have licensed your marks internationally, it is advisable to get in touch with us to confirm whether the licence needs to be recorded. Should you require assistance with auditing your current licence agreements or need advice on future licensing opportunities, please contact us here.