Made on [Day] of [Month], 20[Year] (the "Start Date").
The Parties are:
- 1. [Individual/Company Name] with its registered address at [Registered Office Address] ("Owner" in this agreement); and
- 2. [Individual/Company Name] with its registered address at [Registered Office Address] ("User" in this agreement).
The Mark and the Term
- 2.1 Owner is the registered proprietor of the registered trade mark set out in the Schedule ("Mark") which Owner licenses User to use in accordance with this agreement.
- 2.2. This agreement will start on the Start Date and will continue until the date set out in section 1 of the Schedule unless ended earlier ("The Term").
- 3.1 During [the Term of] this agreement the User will:
- 3.1.1 use the Mark only in accordance with the terms of this agreement;
- 3.1.2 comply with all of the Owner's specifications and directions about the use of the Mark and the standard or quality of the goods or services with which it is used;
- 3.1.3 allow the Owner to test or check any goods or services with which the Mark is used;
- 3.1.4 provide on request samples of goods for the Owner's approval and allow the Owner or its authorised agents at all reasonable times to enter at the User's business address in order to check the User's services;
- 3.1.5 pay all agreed royalties and consultancy fees due to the Owner on time as set out in the Schedule;
- 3.1.6 include in all written items, including digital, used with goods and services sold using the Mark the following notice: "[Insert Mark] is a trade mark owned by [Insert Owner's name] and used under licence from the trade mark owner";
- 3.1.7 remove all references to the Mark from its goods and services on or before the end of the Term of this agreement;
- 3.1.8 co-operate fully in the Owner's application to register the Mark or any similar mark in the UK or elsewhere, and complete any necessary or useful document to fully implement the terms of this agreement, or to complete any such trade mark application;
- 3.1.9 tell the Owner in full without delay if the User learns of any infringement or threatened infringement of the Mark and co-operate fully in any action taken by the Owner;
- 3.1.10 pay the Owner in full for all costs of and losses from any claim against either the Owner or the User, or both of them, due to any failure by the User in selling or providing any goods or services using the Mark, except where such claim is due exclusively to any failure by the Owner.
- 3.2 During [the Term of] this agreement the User shall not:
- 3.2.1 pass or grant any of its rights under this agreement to another person;
- 3.2.2 apply to register the Mark or any similar mark for any goods or services in the United Kingdom or anywhere else.
- 3.3 The User agrees that its only right to use the Mark comes from this agreement, and that the Owner is and will remain the exclusive owner of the Mark and its goodwill during and after the Term of this agreement. Any increase in the Mark's goodwill due to the User's trade will belong exclusively to the Owner, and the User will on request complete an agreement to pass such goodwill to the Owner. Nothing this agreement will grant the User any independent right or interest in the Mark or its goodwill. "Goodwill" in this agreement means all unregistered rights to the Mark including the reputation of the Mark among the general public and the Owner's and User's customers and clients.
Also included in this document:
4. Ending this Agreement
5. Responsibilities on Termination
Tip Sheet for Granting a Licence
Term and Territory
How long is the Term for which you have granted rights? Is there any extension at the end of the Term or a sell-off period for any stock? Are all materials and stock returned to you at the end of the Term/sell-off? Is the Territory less than worldwide? If so, can you add other territories as the deal progresses? And can you sell in goods or services to the Territory from outside the Territory?
Grant of Rights
Are the rights you are granting exclusive or non-exclusive? What rights are you granting? Manufacturing? Selling? Marketing? Advertising and promotion? For which sales channels do they have these rights? Do they include online and mobile? Can they sub-licence to someone else?
Does the company you are granting rights to need any approvals from you before they carry out particular activities? If so, are there any time limits you must comply with? Must you be "reasonable" about granting approvals or not? Must the approval be in writing or is it okay if it's verbal?
If there is an advance or licence fee when is that payable? Is some of it staged rather than it all being paid up-front? Is there a guarantee instead or as well, which is not paid out till the end of the Term? Is the advance/fee off-set against royalties or commission you have to pay? How is any royalty or commission calculated? What is the "base price" - is it a dealer or retail price? Can deductions be made from that base price before calculating the royalty - for example discounts or rebates given to customers, packaging costs, or marketing costs all spent by the company you are giving the licence to?
How often do you have to be accounted to for royalties? In what format must statements be delivered and in what currency must you be paid. Must they receive an invoice before payment? How are withholding taxes dealt with - may they be deducted before you are paid?
Can you promise in the agreement that the product is owned by you and that you are fully entitled to grant them all rights? Have all rights granted by you been fully cleared and paid for?
Are you able to assign the agreement to someone else if you need to? Can they? Or does that need your approval? If they take in investment or get bought and have a change of control does that affect their rights? Can you terminate?
Marketing Commitments and Service Levels
Are they agreeing to any marketing or service level commitments? If so are they precise, measurable, achievable and timetabled? What are the consequences if they fail to perform? Are there any service level commitments you have to agree to cover things like maintenance, repair, replacement of faulty goods or fixing software bugs? Can you fulfil those commitments?
LawBite Legal Advice
LawBite professional advisors can help you straightaway with all of these issues and more. Just go to the the Legal Advice section and make your enquiry. We'll get back to you within 24hrs with a meaningful response.
Clive Rich is a highly experienced entertainment and digital media lawyer, who has also successfully run digital businesses for companies such as Sony and Bertelsmann.
A qualified barrister, he has been a lawyer for almost 30 years and has drafted and crafted contracts for a broad spectrum of multi-nationals, major organisations and brands, including Yahoo, Apple, Napster, SanDisk, Myspace and the BBC.
He has also previously run his own legal practice, Rich Futures Ltd in association with the Top 30 UK law firm, Olswang LLP, representing a variety of technology companies and SMEs.
Clive is a qualified Mediator through the Centre for Effective Dispute Resolution (CEDR) and a qualified Arbitrator through the Central Institute of Arbitration (CIArb) in London.
As a negotiator, he is the author of “The Yes Book: the Art of Better Negotiation”, published by Random House in March 2013. Clive has also designed and successfully launched a negotiation App called “Close My Deal”, enabling people to understand the basis of successful negotiation and apply the skills to everyday scenarios. He has provided negotiating coaching and deal making services to a wide range of large organisations and SMEs. He has also been a board member of a number of digital SMEs.
Clive is a devoted father and husband, but when he is not spending time with his family, he likes to unwind by playing golf or watching a variety of sports (football, rugby, cricket). He's a lifelong Milwall FC fan... but don't hold that against him!
Step By Step Guide
When To Use this document:
This agreement is to be used when an owner is granting rights to a user to use their Trademark, subject to particular conditions and limitations which are set out in the agreement.