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Exclusive Trademark Licence Agreement Template for England and Wales

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Key Requirements PROMPT example:

Exclusive Trademark Licence Agreement

"I need an Exclusive Trademark Licence Agreement for granting rights to use our company's food and beverage trademarks in Germany and Austria, with a minimum annual royalty of €500,000 and an initial term of 5 years starting from January 2025."

Document background
An Exclusive Trademark Licence Agreement is essential when a trademark owner wishes to grant sole rights to another party to use their trademark(s) in specific territories or markets. This agreement, governed by English and Welsh law, provides comprehensive protection for both licensor and licensee, covering aspects such as quality control, royalty structures, and territorial limitations. It's particularly useful for businesses expanding into new markets or leveraging brand value through controlled licensing arrangements. The agreement must comply with the Trade Marks Act 1994 and related UK legislation, ensuring proper protection and enforcement of trademark rights.
Suggested Sections

1. Parties: Identification and details of the licensor and licensee

2. Background: Context of the agreement and ownership of the trademark

3. Definitions: Key terms used throughout the agreement including Licensed Marks, Territory, Licensed Products

4. Grant of Licence: Scope and nature of the exclusive licence, including permitted uses and restrictions

5. Territory: Geographical scope of the licence and any territorial restrictions

6. Term and Termination: Duration of the agreement, renewal terms, and grounds for termination

7. Royalties and Payments: Financial terms, payment schedules, and reporting requirements

8. Quality Control: Standards, monitoring, and approval processes for licensed products

9. Protection of the Marks: Obligations regarding trademark protection, infringement, and enforcement

10. Warranties and Indemnities: Legal guarantees and protections for both parties

11. General Provisions: Standard boilerplate clauses including governing law, notices, and assignment

Optional Sections

1. Sub-licensing Rights: Terms and conditions for granting sub-licenses, when sub-licensing is permitted

2. Minimum Performance Requirements: Minimum sales or revenue targets that the licensee must achieve

3. Marketing and Promotion: Specific marketing commitments, restrictions, and approval processes

4. Non-Competition: Restrictions on competing activities during and after the agreement

5. Change of Control: Provisions dealing with changes in ownership or control of either party

Suggested Schedules

1. Schedule 1 - Licensed Trademarks: Detailed list of all trademarks covered by the agreement, including registration numbers

2. Schedule 2 - Licensed Products: Comprehensive list of products and services covered by the licence

3. Schedule 3 - Quality Standards: Detailed quality requirements, specifications, and approval processes

4. Schedule 4 - Royalty Calculations: Detailed methodology for calculating royalties, including examples if needed

5. Schedule 5 - Approved Form of Trademark Notice: Specified format for trademark notices to be used on licensed products

Authors

Alex Denne

Head of Growth (Open Source Law) @ tiktok³ÉÈ˰æ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Relevant legal definitions



























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Industries

Trade Marks Act 1994: Primary UK legislation governing trademark rights, registration, and licensing. Sections 28-31 specifically address trademark licensing requirements, including provisions for exclusive licenses and recordal requirements.

Trade Marks Regulations 2018: Updated regulations implementing EU Directive 2015/2436, providing current framework for trademark administration and enforcement in the UK post-Brexit.

Common Law Contract Principles: Fundamental principles of English contract law including offer, acceptance, consideration, intention to create legal relations, and capacity to contract.

Competition Act 1998: Legislation ensuring the license agreement complies with competition laws, particularly regarding territorial restrictions and market division.

Consumer Rights Act 2015: Legislation relevant when licensed products will be sold to consumers, ensuring consumer protection requirements are met.

Intellectual Property (Enforcement, etc.) Regulations 2006: Regulations providing specific measures for enforcement of intellectual property rights, including licensed trademarks.

Companies Act 2006: Legislation governing UK company operations, relevant for proper execution of agreements by corporate entities.

EU Trade Mark Regulation: Post-Brexit considerations for EU trademark rights and their interaction with UK exclusive licenses.

Paris Convention: International treaty providing framework for intellectual property protection across member states, including trademark rights.

TRIPS Agreement: WTO agreement setting minimum standards for intellectual property regulation, affecting international aspects of trademark licensing.

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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