A trademark license is a formal agreement entered into between the owner of a trademark (referred to as the licensor) and an individual or entity interested in using the trademark (known as the licensee) within a specific territory. This agreement grants the licensee the legal permission to utilize the trademark, outlining the mutually agreed-upon terms and conditions.
There are numerous advantages associated with licensing your trademark rights. These benefits encompass the creation of additional revenue streams (as the trademark can be licensed to multiple parties, generating additional income from each licensee), the potential to expand into previously inaccessible territories, and the utilization of the licensee's capabilities in manufacturing, distribution, sales, or marketing, among others.
Upon execution of the license agreement, both brand owners and licensees should ensure they fulfill their respective obligations as outlined in the agreement. Additionally, both parties should be aware of any regulatory requirements or procedural "housekeeping matters" specific to the territory where the trademarks are being licensed.
For instance, when brand owners license their trademarks for use outside of Australia, certain countries necessitate the registration of the trademark license agreement with the local government trademark office. This registration may be essential to maintain the validity of the trademark, acknowledge the rights of the licensee, and facilitate the collection of royalties under the license. Notable countries with such requirements include Indonesia, Israel, Papua New Guinea, and Thailand.
In other countries, while not obligatory, it is often advisable to register a trademark license with the local government trademark office. This step can prove helpful in enforcing trademark rights and demonstrating the trademark's use in the relevant market.
If you are currently licensing your trademarks internationally or plan to do so, it is strongly recommended that you take into account the specific local requirements related to the registration of the license agreement. This proactive approach helps prevent the potential loss of rights to your trademarks.
Key Takeaways:
We urge you to review any existing trademark license agreements to ensure that all necessary "housekeeping" matters have been addressed. If you have licensed your trademarks internationally, it is advisable to reach out to us to confirm whether registration of the license agreement is required. Whether you need assistance in auditing your current license agreements or seek advice on future licensing opportunities, please do not hesitate to contact us. You can get in touch with us here.