Trademark Licensing
The owner of the registered trademark or service mark may license other persons to use such registered mark with the goods or services for which it was registered, entirely or partially.
Legal Effect
The Trademark Licensing Agreement must be made in writing and registered with the Trademark Registrar. Or otherwise, the Licensing Agreement is void. To that extent, the parties cannot take action in Court demanding the other party to perform its obligation in relation to the uses of trademark. For instances, the royalty of the use of trademark cannot be demanded by taking court action or the licensor can at any time stop the licensee from using the trademark.
The use of the licensed trademark by the registered licensee shall be deemed the “use” by the trademark owner as required by law. Under the Trademark Act, in the event that, a registered trademark has not been used for three consecutive years, it may be challenged for cancellation by third party or the Trademark Registrar on the ground of non-use. The use by the Licensee would help prevent the registered trademark from cancellation on this ground.
Requirement
In the registration of trademark licensing agreement, an Agreement entered into between the licensor and the licensee must be submitted. Full or partial Agreement is acceptable.
In the application, it is required to state at least the following information:
1) The agreed terms or conditions between the owner and the licensee to allow the owner to control over the quality of the goods to be produced by the licensee
2) The goods for which the trademark to be licensed for use.
3) It is also required to state if it is exclusive licensing or non-exclusive licensing agreement.
The requirement is regarded as a form of contract requiring strict adherence. Failure to comply with the requirement will nullify the trademark licensing agreement.