Sample Trademark Licence Agreement
- a22162
- Jan 16
- 14 min read
Trademark License Agreement
Sample Trademark Licence Agreement
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT ("Agreement") is made and entered into as of [DATE] by and between [LICENSOR NAME], a [LICENSOR ENTITY TYPE] with its principal place of business at [LICENSOR ADDRESS] ("Licensor"), and [LICENSED NAME], a [LICENSEE ENTITY TYPE] with its principal place of business at [LICENSEE ADDRESS] ("Licensee").
WHEREAS, Licensor is the owner of certain trademarks, service marks, and trade names (collectively, the "Marks"), including but not limited to [LIST OF MARKS]; and
WHEREAS, Licensee desires to use the Marks in connection with [DESCRIBE LICENSEE'S BUSINESS, e.g., the manufacture, distribution, and sale of [PRODUCTS/SERVICES] in [GEOGRAPHICAL AREA]]; and
WHEREAS, Licensor is willing to grant Licensee a limited, non-exclusive license to use the Marks in accordance with the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants and agreements contained herein, the parties agree as follows:
1. Grant of License.
1.1 Licensor hereby grants to Licensee a non-exclusive, non-transferable, royalty-free license to use the Marks in connection with [SPECIFICALLY DESCRIBE PERMITTED USES, e.g., the manufacture, distribution, and sale of [PRODUCTS/SERVICES] in [GEOGRAPHICAL AREA]].
1.2 Licensee shall not use the Marks in any manner that is likely to cause confusion with Licensor's use of the Marks or to dilute the distinctiveness of the Marks.
1.3 Licensee shall not use the Marks in any manner that is false, misleading, or deceptive.
1.4 Licensee shall not use the Marks in connection with any products or services that are not of good quality or that are not fit for their intended purpose.
1.5 Licensee shall not use the Marks in any manner that is likely to bring Licensor into disrepute.
2. Quality Control.
2.1 Licensee shall maintain and ensure that the quality of the products and services offered under the Marks meets or exceeds the standards set by Licensor.
2.2 Licensor shall have the right to inspect Licensee's facilities and operations to ensure compliance with this Agreement.
3. Trademark Use and Maintenance.
3.1 Licensee shall use the Marks in accordance with Licensor's trademark usage guidelines, which are attached hereto as Exhibit A and incorporated herein by reference.
3.2 Licensee shall comply with all applicable laws and regulations relating to the use of trademarks in Hong Kong.
3.3 Licensee shall not make any changes to the Marks without the prior written consent of Licensor.
3.4 Licensee shall not register any domain names or social media accounts that incorporate the Marks without the prior written consent of Licensor.
4. Intellectual Property Rights.
4.1 Licensor retains all right, title, and interest in and to the Marks and all intellectual property rights therein.
4.2 Licensee acknowledges that no right, title, or interest in the Marks is transferred to Licensee under this Agreement.
4.3 Licensee agrees to cooperate with Licensor in any action or proceeding to protect the Marks.
5. Indemnity.
5.1 Licensee shall indemnify and hold Licensor harmless from and against any and all claims, losses, damages, liabilities, costs, and expenses (including attorneys' fees) arising out of or relating to Licensee's use of the Marks, including, but not limited to, any claims of trademark infringement, unfair competition, or dilution.
6. Insurance.
6.1 Licensee shall maintain in full force and effect during the term of this Agreement commercial general liability insurance with limits of liability acceptable to Licensor.
7. Confidentiality.
7.1 Licensee shall hold confidential all confidential information of Licensor relating to the Marks, including, but not limited to, Licensor's marketing plans, pricing strategies, and customer lists.
8. Term and Termination.
8.1 This Agreement shall be effective as of the date first written above and shall continue in effect for a period of [NUMBER] years from the date first written above ("Term").
8.2 This Agreement may be terminated by either party upon [NUMBER] days' written notice to the other party for any of the following reasons:
(a) Material breach of this Agreement by the other party that is not cured within [NUMBER] days after receipt of written notice of such breach;
(b) Insolvency or bankruptcy of the other party;
(c) Licensee's cessation of business operations;
(d) Licensee's use of the Marks in a manner that is likely to cause confusion with Licensor's use of the Marks or to dilute the distinctiveness of the Marks.
8.3 Upon termination of this Agreement for any reason, Licensee shall immediately cease all use of the Marks and return to Licensor all materials bearing the Marks.
9. Governing Law and Jurisdiction.
9.1 This Agreement shall be governed by and construed in accordance with the laws of Hong Kong.
9.2 Any dispute arising out of or relating to this Agreement shall be subject to the exclusive jurisdiction of the courts of Hong Kong.
10. Notices.
10.1 All notices and other communications hereunder shall be in writing and shall be deemed to have been duly given when delivered personally, upon the first business day following deposit in the United States mail, postage prepaid, certified or registered, return receipt requested, addressed as follows:
If to Licensor:
[LICENSOR NAME]
[LICENSOR ADDRESS]
If to Licensee:
[LICENSEE NAME]
[LICENSEE ADDRESS]
or to such other address as either party may designate in writing from time to time.
11. Entire Agreement.
11.1 This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof and supersedes all prior or contemporaneous communications, representations, and agreements, whether oral or written.
12. Severability.
12.1 If any provision of this Agreement is held to be invalid or unenforceable, such provision shall be struck and the remaining provisions shall remain in full force and effect.
13. Waiver.
13.1 No waiver of any provision of this Agreement shall be effective unless in writing and signed by the party waiving such provision.
14. Assignment.
14.1 This Agreement shall not be assigned by Licensee without the prior written consent of Licensor.
15. Binding Effect.
15.1 This Agreement shall be binding upon and inure to the benefit of the parties hereto and their respective successors and permitted assigns.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written above.
[LICENSOR NAME]
By: [AUTHORIZED REPRESENTATIVE NAME]
Title: [AUTHORIZED REPRESENTATIVE TITLE]
[LICENSEE NAME]
By: [AUTHORIZED REPRESENTATIVE NAME]
Title: [AUTHORIZED REPRESENTATIVE TITLE]
EXHIBIT A
TRADEMARK USAGE GUIDELINES
[Insert specific trademark usage guidelines, including, but not limited to, acceptable and unacceptable uses of the Marks, proper font and color usage, and required disclaimers.]
This sample agreement provides a basic framework for a trademark license agreement.
Key Considerations for a Hong Kong Trademark License Agreement
1. Scope of License:
Exclusive vs. Non-Exclusive: Determine the level of exclusivity granted to the licensee. An exclusive license restricts the licensor from granting the same rights to others within the specified territory and product/service categories.
Territory: Clearly define the geographical scope of the license. Is it limited to Hong Kong, or does it extend to other regions?
Products/Services: Specify the exact products or services on which the licensee is permitted to use the trademark. Be precise to avoid ambiguity.
2. License Fees and Royalties:
Royalty Structure: Determine how royalties will be calculated (e.g., percentage of sales, per-unit fee, minimum guarantee).
Payment Terms: Establish clear payment schedules and deadlines.
Auditing Rights: Include provisions for the licensor to audit the licensee's records to verify royalty payments.
3. Quality Control and Brand Standards:
Quality Standards: Implement strict quality control measures to ensure the licensee maintains the integrity of the trademark and the associated products or services.
Brand Guidelines: Provide detailed brand guidelines to the licensee, covering aspects like logo usage, color palettes, font styles, and advertising messaging.
Right of Approval: Include a clause granting the licensor the right to approve marketing materials and advertising campaigns.
4. Intellectual Property Rights:
Ownership: Clearly state that the licensor retains ownership of the trademark.
Confidentiality: Require the licensee to maintain the confidentiality of the licensor's confidential information.
Infringement: Outline the licensee's obligations to assist the licensor in protecting the trademark from infringement.
5. Term and Termination:
Initial Term: Specify the initial term of the agreement.
Renewal Options: Include provisions for renewal of the agreement, if desired.
Termination Events: Define grounds for termination, such as breach of contract, insolvency, or misuse of the trademark.
6. Dispute Resolution:
Negotiation and Mediation: Encourage the parties to attempt to resolve disputes through negotiation or mediation.
Arbitration: Consider including an arbitration clause to provide a more efficient and cost-effective dispute resolution mechanism.
Governing Law and Jurisdiction: Specify the governing law and jurisdiction for any legal disputes.
7. Other Important Clauses:
Insurance: Require the licensee to maintain adequate insurance coverage.
Indemnification: Include an indemnification clause to protect the licensor from liabilities arising from the licensee's use of the trademark.
Notices: Establish procedures for providing notices and communications between the parties.
Entire Agreement: State that the agreement constitutes the entire understanding between the parties.
Additional Considerations for Hong Kong:
Hong Kong Trademark Ordinance: Familiarize yourself with the relevant provisions of the Hong Kong Trademark Ordinance.
Local Customs: Be mindful of local customs and business practices in Hong Kong.
Seek Legal Counsel: Consult with a qualified intellectual property attorney in Hong Kong to ensure your agreement complies with local laws and regulations.
By carefully considering these factors and incorporating them into your trademark license agreement, you can establish a strong legal framework that protects your intellectual property rights and ensures a successful licensing relationship.
Comprehensive Trademark License Agreement (Hong Kong)
THIS TRADEMARK LICENSE AGREEMENT ("Agreement") is made and entered into as of [DATE] by and between [LICENSOR NAME], a [LICENSOR ENTITY TYPE] with its principal place of business at [LICENSOR ADDRESS] ("Licensor"), and [LICENSEE NAME], a [LICENSEE ENTITY TYPE] with its principal place of business at [LICENSEE ADDRESS] ("Licensee").
WHEREAS, Licensor is the owner of certain trademarks, service marks, and trade names (collectively, the "Marks"), including but not limited to [LIST OF MARKS]; and
WHEREAS, Licensee desires to use the Marks in connection with [DESCRIBE LICENSEE'S BUSINESS, e.g., the manufacture, distribution, and sale of [PRODUCTS/SERVICES] in [GEOGRAPHICAL AREA]]; and
WHEREAS, Licensor is willing to grant Licensee a limited, non-exclusive license to use the Marks in accordance with the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants and agreements contained herein, the parties agree as follows:
1. Grant of License
1.1 Scope: Licensor hereby grants to Licensee a non-exclusive, non-transferable license to use the Marks in connection with [SPECIFICALLY DESCRIBE PERMITTED USES, e.g., the manufacture, distribution, and sale of [PRODUCTS/SERVICES] in [GEOGRAPHICAL AREA]].
1.2 Limitations:
* Licensee shall not use the Marks in any manner that is likely to cause confusion with Licensor's use of the Marks or to dilute the distinctiveness of the Marks.
* Licensee shall not use the Marks in any manner that is false, misleading, or deceptive.
* Licensee shall not use the Marks in connection with any products or services that are not of good quality or that are not fit for their intended purpose.
* Licensee shall not use the Marks in any manner that is likely to bring Licensor into disrepute.
* Licensee shall not use the Marks in any manner that is contrary to applicable laws and regulations in Hong Kong.
2. Quality Control and Brand Standards
2.1 Quality Control: Licensee shall maintain and ensure that the quality of the products and services offered under the Marks meets or exceeds the standards set by Licensor, as outlined in Exhibit A (Quality Control Standards).
2.2 Brand Guidelines: Licensee shall strictly adhere to the Trademark Usage Guidelines set forth in Exhibit B, which govern the proper use of the Marks in all marketing and advertising materials.
3. Trademark Use and Maintenance
3.1 Use of Marks: Licensee shall use the Marks only in accordance with this Agreement, the Trademark Usage Guidelines, and any other instructions provided by Licensor in writing.
3.2 Changes to Marks: Licensee shall not make any changes to the Marks without the prior written consent of Licensor.
3.3 Domain Names and Social Media: Licensee shall not register any domain names or social media accounts that incorporate the Marks without the prior written consent of Licensor.
3.4 Record Keeping: Licensee shall maintain accurate records of its use of the Marks.
4. Intellectual Property Rights
4.1 Ownership: Licensor retains all right, title, and interest in and to the Marks and all intellectual property rights therein.
4.2 No Transfer of Ownership: Licensee acknowledges that no right, title, or interest in the Marks is transferred to Licensee under this Agreement.
5. License Fees and Royalties
5.1 Royalty Payments: Licensee shall pay Licensor royalties as follows: [Specify royalty rate, e.g., a percentage of net sales, a fixed fee per unit sold, or a combination].
5.2 Payment Schedule: Royalty payments shall be made [Specify payment frequency, e.g., quarterly] in arrears within [Number] days of the end of each [Quarter/Month/Year].
5.3 Auditing Rights: Licensor shall have the right to audit Licensee's books and records relating to the use of the Marks and the calculation of royalties upon reasonable prior written notice.
6. Confidentiality
6.1 Confidential Information: Licensee shall hold confidential all confidential information of Licensor relating to the Marks, including, but not limited to, Licensor's marketing plans, pricing strategies, and customer lists.
6.2 Disclosure: Licensee shall not disclose any confidential information to any third party without Licensor's prior written consent, except as may be required by law.
7. Indemnity
7.1 Indemnification: Licensee shall indemnify and hold Licensor harmless from and against any and all claims, losses, damages, liabilities, costs, and expenses (including attorneys' fees) arising out of or relating to Licensee's use of the Marks, including, but not limited to, any claims of trademark infringement, unfair competition, or dilution.
8. Insurance
8.1 Insurance Coverage: Licensee shall maintain in full force and effect during the term of this Agreement commercial general liability insurance with limits of liability acceptable to Licensor.
9. Term and Termination
9.1 Initial Term: This Agreement shall be effective as of the date first written above and shall continue in effect for a period of [NUMBER] years from the date first written above ("Initial Term").
9.2 Renewal: This Agreement may be renewed for successive [NUMBER] year terms upon the mutual written consent of both parties.
9.3 Termination Events: This Agreement may be terminated by either party upon [NUMBER] days' written notice to the other party for any of the following reasons: Material breach of this Agreement by the other party that is not cured within [NUMBER] days after receipt of written notice of such breach. Insolvency or bankruptcy of the other party. Licensee's cessation of business operations. Licensee's use of the Marks in a manner that is likely to cause confusion with Licensor's use of the Marks or to dilute the distinctiveness of the Marks.
9.4 Termination for Cause: Either party may terminate this Agreement immediately upon written notice to the other party if the other party commits a material breach that cannot be cured.
9.5 Consequences of Termination: Upon termination of this Agreement for any reason, Licensee shall immediately cease all use of the Marks and return to Licensor all materials bearing the Marks.
10. Governing Law and Jurisdiction
10.1 Governing Law: This Agreement shall be governed by and construed in accordance with the laws of Hong Kong.
10.2 Jurisdiction: Any dispute arising out of or relating to this Agreement shall be subject to the exclusive jurisdiction of the courts of Hong Kong.
11. Notices
11.1 Method of Delivery: All notices and other communications hereunder shall be in writing and shall be deemed to have been duly given when delivered personally, upon the first business day following deposit in the United States mail, postage prepaid, certified or registered, return receipt requested, addressed as follows:
If to Licensor:
[LICENSOR NAME]
[LICENSOR ADDRESS]
If to Licensee:
[LICENSEE NAME]
[LICENSEE ADDRESS]
or to such other address as either party may designate in writing from time to time.
12. Entire Agreement
12.1 Entire Understanding: This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof and supersedes all prior or contemporaneous communications, representations, and agreements, whether oral or written.
13. Severability
13.1 Severable Provisions: If any provision of this Agreement is held to be invalid or unenforceable, such provision shall be struck and the remaining provisions shall remain in full force and effect.
14. Waiver
14.1 No Waiver: No waiver of any provision of this Agreement shall be effective unless in writing and signed by the party waiving such provision.
15. Assignment
15.1 Assignment by Licensee: This Agreement shall not be assigned by Licensee without the prior written consent of Licensor.
16. Binding Effect
16.1 Binding on Successors: This Agreement shall be binding upon and inure to the benefit of the parties hereto and their respective successors and permitted assigns.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written above.
[LICENSOR NAME]
By: [AUTHORIZED REPRESENTATIVE NAME]
Title: [AUTHORIZED REPRESENTATIVE TITLE]
[LICENSEE NAME]
By: [AUTHORIZED REPRESENTATIVE NAME]
Title: [AUTHORIZED REPRESENTATIVE TITLE]
Exhibit A: Quality Control Standards
[Insert specific quality control standards, including, but not limited to, product specifications, testing procedures, and quality assurance processes.]
Exhibit B: Trademark Usage Guidelines
[Insert detailed trademark usage guidelines, including, but not limited to, acceptable and unacceptable uses of the Marks, proper font and color usage, and required disclaimers.]
This sample agreement provides a comprehensive framework for a trademark license agreement in Hong Kong.
This comprehensive trademark license agreement builds upon the previous samples and incorporates more detailed provisions and considerations:
Scope of License:
Clearly defines the scope of the license, including specific product categories, geographical limitations, and any restrictions on the licensee's use of the Marks.
Includes limitations on licensee's ability to sub-license or assign the license without prior written consent.
Quality Control and Brand Standards:
Includes separate exhibits for Quality Control Standards and Trademark Usage Guidelines, allowing for greater flexibility and specificity.
Emphasizes the importance of maintaining the quality and integrity of the brand.
License Fees and Royalties:
Provides a detailed structure for royalty payments, including the calculation method (percentage of sales, per-unit fee, etc.), payment schedule, and auditing rights.
Allows for potential adjustments to royalty rates based on factors such as sales volume or market conditions.
Confidentiality:
Specifically defines "confidential information" and outlines the licensee's obligations to protect such information.
Term and Termination:
Includes provisions for both initial term and renewal options, as well as various grounds for termination, including material breach, insolvency, and cessation of business.
Clearly outlines the consequences of termination, including the licensee's obligation to cease use of the Marks and return all related materials.
Dispute Resolution:
While not explicitly included, you may consider adding a clause that encourages the parties to attempt to resolve disputes through negotiation or mediation before resorting to litigation.
Governing Law and Jurisdiction:
Specifies the governing law and jurisdiction for any legal disputes arising from the agreement.
This agreement aims to provide a more robust and comprehensive framework for a trademark licensing relationship in Hong Kong.
Key Considerations for Hong Kong:
Trademark Ordinance: Ensure compliance with the Hong Kong Trademark Ordinance and other relevant regulations.
Local Customs: Be mindful of local business practices and cultural nuances in Hong Kong.
By carefully considering these factors and seeking professional legal advice, you can create a strong and effective trademark license agreement that protects your intellectual property rights and fosters a successful business relationship with your licensee.
How Bestar can Help
Sample Trademark Licence Agreement
Bestar can significantly assist in drafting and reviewing a trademark license agreement in Hong Kong. Here's how:
1. Ensuring Legally Sound Agreement:
Compliance with Hong Kong Law: Bestar will ensure the agreement complies with the Hong Kong Trademark Ordinance and other relevant laws, regulations, and legal precedents. This includes understanding and addressing specific requirements and nuances of Hong Kong IP law.
Clarity and Enforceability: Bestar will draft the agreement with clear, concise, and unambiguous language, ensuring all terms and conditions are legally enforceable.
Protection of Licensor's Interests: Bestar will advocate for the licensor's interests, ensuring the agreement adequately protects the licensor's intellectual property rights and provides for appropriate remedies in case of breach.
2. Tailoring the Agreement to Specific Needs:
Scope of License: Bestar will help define the scope of the license precisely, including the permitted uses of the trademark, geographical limitations, and any restrictions on the licensee's activities.
Royalty Structure: Bestar will assist in establishing a fair and equitable royalty structure that aligns with the value of the trademark and the licensee's expected revenue.
Quality Control and Brand Standards: Bestar will help draft comprehensive quality control and brand standards to maintain the integrity of the trademark and protect the licensor's reputation.
3. Managing Risks and Mitigating Potential Issues:
Identifying and Addressing Potential Risks: Bestar will identify potential risks and liabilities associated with the licensing arrangement and advise on appropriate mitigation strategies.
Dispute Resolution: Bestar will include appropriate dispute resolution clauses, such as negotiation, mediation, or arbitration, to provide efficient and cost-effective mechanisms for resolving any disagreements.
Confidentiality and Data Protection: Bestar will ensure the agreement includes robust confidentiality provisions to protect the licensor's confidential information.
4. Navigating Complex Legal Issues:
Trademark Infringement: Bestar will advise on strategies to prevent and address potential trademark infringement issues.
Cross-Border Licensing: If the agreement involves cross-border elements, Bestar will ensure compliance with relevant international laws and regulations.
Tax Implications: Bestar can provide guidance on the tax implications of the licensing agreement for both the licensor and the licensee.
5. Ongoing Professional Support:
Monitoring Compliance: Bestar can assist in monitoring the licensee's compliance with the terms of the agreement.
Advising on Changes: Bestar can advise on any necessary modifications to the agreement as the business relationship evolves.
By engaging the services of Bestar in Hong Kong, you can ensure that your trademark license agreement is legally sound, protects your interests, and provides a solid foundation for a successful licensing relationship.
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