Licence of trade marks

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Both registered and unregistered trade marks may be licensed by one business to another using this template.

Author: Alasdair Taylor
Updated: 9 May 2023
Length: 11 pages
Notes: 13 pages
Format: MS Word (.DOCX)

This licence of trade marks document can be used by a trade mark proprietor to license rights in registered and/or unregistered trade marks to a licensee. The trade mark licence may be adapted to favour the interests of either party, or to balance the parties' interests as appropriate.

Under Section 28(2) of the Trade Marks Act 1994, a licence of a registered trade mark is not effective unless it is in writing, signed by or on behalf of the grantor.

A grant of a licence of a registered trade mark is a registrable transaction under Section 25 of the Trade Marks Act 1994. Until an application has been made for registration of the prescribed particulars of a registered transaction: (a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it; and (b) a person claiming to be a licensee by virtue of the transaction does not have the protection of Section 30 or 31 of the Act.

Moreover, where a person becomes the licensee of a registered trade mark by virtue of a registrable transaction, unless (a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of 6 months beginning with its date, or (b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as possible thereafter, then he or she is not entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the prescribed particulars of the transaction are registered.

A licence of a UK registered trade mark should be registered with the UK Intellectual Property Office using the prescribed form. The termination of such a licence should be registered.

  1. Definitions
  2. Term
  3. Delivery of Licensor Trade Marks
  4. Licence of Licensor Trade Marks
  5. Consideration
  6. Warranties
  7. Third party infringement of Licensor Trade Marks
  8. Indemnities
  9. Limitations and exclusions of liability
  10. Liability and indemnities
  11. Termination
  12. Effects of termination
  13. Notices
  14. Assignment
  15. No waivers
  16. Severability
  17. Third party rights
  18. Variation
  19. Entire agreement
  20. Law and jurisdiction
  21. Interpretation
What sorts of restrictions on the use of the trade mark are included in the licence?

The restrictions set out in Clause 5 of the licence are all of a general nature. They include restrictions on causing harm to the goodwill inherent in the trade mark, bringing the licensor or the trade mark itself into disrepute, jeopardising or invalidating any registration, or otherwise prejudicing the rights of the trade mark licensor.

Does the licence of trade marks restrict the licensee from registering anything similar to the trade mark that is the subject of the licence?

Yes. The following clause is included in the template: "the Licensee will not during the Term and in the Territory apply to register a trade mark, sign, business name or domain name that is identical or confusingly similar to any Trade Mark".

Can this document be used for the licensing of more than one trade mark?

Yes, although if the different trade marks are being licensed on different terms, then more fundamental adaptations of the template may be required.

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