| 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.
