Trademark License Agreement (long)

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Trademark License Agreement (Long)

A more extensive trademark license agreement including terms covering:

  • Exclusivity
  • Appointment of user
  • Payments
  • Promotion
  • Services
  • Execution
  • No agency
  • Similar marks
  • Maintenance of value
  • Marketing materials
  • Infringement proceedings
  • Indemnity
  • Termination
  • Warranties
  • Notices
  • Applicable law
  • GST
  • Charges
  • Exclusive/non-exclusive rights
  • Assignment
  • Amendments
  • Severability
  • Entire agreement

The agreement includes a Schedule for variables and Annexure for graphical representations.

9 pages long.

 

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Trademark License Agreement

The importance of trade mark registration is often overlooked in dealing with intellectual property (IP). Trademarks are registrable in Australia through IP Australia. This government organisation administers the legislation, and deals with all aspects of application and registration. IP Australia now offer online document preparation and filing for a range of transactions through eSERVICES. You are required to register for this service. For help on registering, see the eServices registration help page.

Once an application is registered your trademark obtains an Australia-wide monopoly for the rights associated with the trade mark. Such a mark is also an asset which can be sold or licensed and is an essential part of enhancing the value of a business and of any franchising strategy. It is also usually possible to register rights overseas once you are registered in Australia.

A person does not acquire any exclusive right to use a name, word or unregistered mark merely because they created it or were the first to use it. Registration of a trademark gives that exclusive right in relation to the goods or services in the area in relation to which it is registered. Registration of a business name or company name does not give that exclusive right.

If, however, a mark has been used to form a connection between a person and goods or services that they supply, unauthorised use by another person may, even with a registered trademark, amount to a misrepresentation which is actionable as passing off or as conduct likely to mislead or deceive under the Australian Consumer Law – Schedule 2 of the Competition and Consumer Act 2010.

An unregistered mark which has become very well known and used in trade for an extensive period of time does not give the person with whom it is connected an exclusive right to use the mark. Any other person is free to use the mark as long as the use does not constitute passing off or contravention of the Australian Consumer Law.

Many people also believe that they have protected their trading name by registering it as a business name, company name or domain name. This is unfortunately not the case. A business name is the name under which a business operates. The national register maintains a register of those who operate a business under a name other than their own. This allows customers and suppliers to the business to search and identify the person behind the business should it become necessary to do so.

The purpose of company name registration is simply to award a unique name to a corporation. Although that registration means that no other company can be registered with exactly the same combination of words, registration does not, by itself, necessarily convey proprietary rights to use that name as a trading name.  

Finally, a domain name is merely the address of a website. Again, the registration of a domain name does not of itself confer proprietary rights in the use of that name. For this reason, many owners of a trade mark have successfully challenged domain name registration.

It is to be remembered that ASIC does not check for trademark registrations and IP Australia does not check for registered company or business names.

Registering the trading name as a trade mark gives the widest possible protection against others using that name. The name simplicities may be registered subject to compliance with the applicable criteria discussed below. The name may be stylised and through colour font and imagery gain protection despite having a name that otherwise would not qualify to be registered.

The importance of trade mark registration should therefore be emphasised to your clients. Clients who rely on promoting their businesses through the business or company name may find that the name infringes someone else’s trade mark. In which case they may either  have to forego its use or, if the trademark is a later registration than the establishment of their business, they have the expense and uncertainty of opposing the trademark application. Altogether this may lead to an expensive exercise of re-branding and loss of goodwill associated with the name, apart from any legal action from the party whose registered trade mark has been infringed.  Registering an appropriate trade mark when setting up the business would avoid these situations.

A trade mark is a sign used to distinguish the goods or services of one manufacturer or seller from those not produced by that manufacturer or seller.

A trade mark can be in the form of a word, phrase, letter, number, sound, scent, logo, picture, symbol, shape, colour, and aspect of packaging or any combination of these. Particular signs, such as flags and armorial bearings are prohibited from regulation by international convention.

Registering a trade mark will give your client the exclusive right to use, license or sell that mark within Australia for the classes of goods and services which they have registered. It may also give the Australian Customs Service notice to object to the importation of goods infringing the trade mark.

Once registered the trade mark may be displayed with the symbol ® adjacent which puts others on notice that the mark is registered.

Your client can protect its rights in an unregistered trade mark under the misleading and deceptive conduct provisions of the Competition, for conduct occurring on or after January 2010; or at common law through an action for passing off; via state-based fair trading legislation. However it is easier and more cost effective to protect a registered trade mark under the Trade Marks Act 1995. An unregistered trade mark can use the symbol ™ at any time.

Generally, a proprietor of a registered trade mark can stop other persons from using similar words on goods or services that are the same as or closely related to the goods or services for which the trade mark is registered. However, if your client’s trade mark is well known in Australia then your client may be able to prevent another person from using the same or similar words on goods or services that are unrelated to their registered goods or services.

Where another person has infringed the trade mark rights of a registered proprietor, the proprietor may be entitled to legal relief in stopping the infringement and compensation for the damage suffered as a consequence of the infringement.

A single registration of a trade mark is valid throughout Australia and its territories.

A trade mark must be capable of distinguishing your client’s goods or services from those of other traders to qualify for registration. A general description of goods or services (e.g. ‘bananas’ or ‘butcher’) will not be registrable because it is descriptive or it is a word that other traders need to use in the normal course of their trade.

Likewise, geographical names, common surnames and trade expressions would be very difficult to register as trademarks. However, someone who has widely used such a word for a long enough period of time to establish a significant reputation in that word may be able to register it as a trade mark (e.g. Apple for computers, McDonald’s for fast food).

Common acronyms and short combinations of numbers or letters on their own would also be difficult to register as trademarks.

Most of the words described above as difficult to register, may be capable of registration if combined with other unique words or symbols. In those circumstances the owner of the trade mark will be able to prevent other traders form using a combination of words and symbols that are similar to the registered trade mark but not the constituent words on their own.

Words that are scandalous, contrary to law or likely to mislead or cause confusion are unlikely to be capable of registration as trademarks.

Finally, words that are substantially identical to or deceptively similar to earlier registered trademarks in respect of the same or similar goods or services will not be registered.

Even if your client avoids using the types of words described above and the application for trade mark registration is accepted and examined, registration is not guaranteed. Every application is advertised in the Australian Official Journal of Trade Marks, one of the purposes of which is to provide an opportunity for others to oppose registration a trade mark.

1          Pre-Application

IP Australia maintains a database of all registered trademarks and most applications for registration. This database can be searched to determine whether or not your proposed trade mark may be refused on the basis of it being identical or confusingly similar to an existing registration or application.

2          Availability

We recommend a preliminary availability search at the stage where your client is contemplating registration or when they are deciding on a new brand, name or logo.

Preliminary searches should include as a minimum:

  • the Australian Trade Mark Online Search System (ATMOSS), which searches for similar trademarks and includes the most important details of trade marks (e.g. words, images, owner details, goods and services claimed);
  • TMCheck, which is designed to help business name applicants more easily identify instances where their business name may infringe an existing similar or identical trade mark filed or registered with IP Australia;
  • GoogleYellow Pages and White Pages (nationally);
  • the ASIC names index; and
  • the Australian Business Register.

These searches can all be done instantly and are free online.

If the preliminary search identifies similar trademarks, further inquiries as to the relevant class of goods and services, and the use of the trade mark, should be made.

3          Goods and/or services

Your client’s application for a trade mark must specify the goods and services for which your client intends to use the trade mark, from the following list:

3.1      CLASSES OF GOODS

Class 1:

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2:

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3:

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4:

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5:

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6:

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7:

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 8:

Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10:

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 11:

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12:

Vehicles; apparatus for locomotion by land, air or water.

Class 13:

Firearms; ammunition and projectiles; explosives; fireworks.

Class 14:

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 15:

Musical instruments.

Class 16:

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17:

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18:

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19:

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20:

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21:

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22:

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23:

Yarns and threads, for textile use.

Class 24:

Textiles and textile goods, not included in other classes; bed and table covers.

Class 25:

Clothing, footwear, headgear.

Class 26:

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27:

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28:

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29:

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30:

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31:

Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32:

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33:

Alcoholic beverages (except beers).

Class 34:

Tobacco; smokers’ articles; matches.

CLASSES OF SERVICES

Class 35:

Advertising; business management; business administration; office functions.

Class 36:

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37:

Building construction; repair; installation services.

Class 38:

Telecommunications.

Class 39:

Transport; packaging and storage of goods; travel arrangement.

Class 40:

Treatment of materials.

Class 41:

Education; providing of training; entertainment; sporting and cultural activities.

Class 42:

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43:

Services for providing food and drink; temporary accommodation.

Class 44:

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45:

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

3.2      Searching for classes

You can perform an electronic search for appropriate classes, for example, using the search term ‘wedding photography’ to determine which classes might be suitable to a client who is a wedding photographer and wishes to register a trade mark.

The more diverse your client’s range of goods and/or services, the more classes your client will need to seek registration in.

The registration fees are determined by reference to the number of classes in which your client files.

It is important to get the specification of goods and services right because that will impact on your ability to protect your client’s trade mark against infringement and may determine whether or not your client’s trade mark application is accepted.

Our precedent letter includes an initial advice to the client regarding trade mark registration and the results of preliminary searches.

4          Applying For Registration

To prepare and file your client’s application you will need the following information:

  • Applicant’s legal name, description and principal place of business;
  • A clear representation of the trade mark that can be photocopied/printed;
  • If the trade mark is a sound or scent, a detailed description of the trade mark;
  • If the trade mark is a three dimensional shape, a graphical representation of the trade mark from each aspect;
  • A list of the goods and services upon which your client proposes using the trade mark; 
  • A translation of any part of the mark that is in a language other than English; and
  • If priority is to be claimed pursuant to the Paris Convention for an earlier application in another jurisdiction, the details of that prior application.

You are able to sign the application on your client’s behalf.

Once your client has instructed you to apply, there are three ways you can enter the application process and each attracts its own fees.

  1. You can ‘test the water’ and request an assessment of the likelihood of your trade mark achieving registration through TM Headstart prior to filing your client’s trade mark application.  This must be submitted online. It contains a Goods and Services pick-list which helps to nominate the goods and services in their correct categories and will calculate necessary fees. You can also subsequently file a trade mark application using this service. This is recommended where there is a degree of uncertainty as to whether your client’s mark will be considered too similar to another registered trade mark or where the mark might be considered too descriptive/generic to register.
  2. You can apply to register your client’s trade mark online. Once you submit the application and its information has been published the details of the application cannot be substantially changed, nor can classes of goods and services be added, apart from minor changes during the examination process.
  3. You can prepare a paper application to register a trade mark which may be lodged at a state office of IP Australia or mailed to them. The appropriate form is an Application to Register a Trade Mark.
  4. Applicable fees.  Note that the fees for applying in paper form are substantially more than by applying online.  Under the GST Act 1999, GST does not apply to any of the statutory fees associated with trade mark applications.

4.1      Examination reports

All applications will be examined by IP Australia and an examiner’s report is sent to your client. This usually occurs within 2-3 months of the application being filed and its cost is covered under the initial fees.
Where the matter is urgent, for example given imminent court proceedings, or where your client has already expended significant funds in the market place (e.g. signage, advertising) your client may also lodge a Request for Expedited Examination at the same time as lodging the application.  No fees apply to this. Note that the application includes a declaration detailing the reasons for the request which must be witnessed.

Statistically, most applications are accepted at this stage. In some cases the examination will result in an adverse report by IP Australia which involves the examiner raising an objection. Your client will have 15 months to respond to that objection or the application will lapse. You may, as of right, request two, three month extensions to this time period. A fee applies.

Possible objections may be based on the lack of distinctiveness of the trade mark or similarities between your client’s trade mark and earlier registrations or applications. You may need to submit evidence of your client’s earlier use of the trade mark to overcome some of the examiner’s objections. You may also need to amend your client’s application slightly. In our experience, the examiners at IP Australia are very helpful and it is worth a phone call to them upon receipt of objections to clarify how they may be overcome.

5          Acceptance

Once the examiner’s objections have been overcome, or in the absence of any objections, the application will be published in the Australian Official Journal of Trade Marks.

For three months after publication the application may be opposed.

If there is no opposition then your client’s trade mark will be registered at the expiry of the three months and the certificate of registration issued, once your client has paid the registration fee.

Your client has six months from the date of publication of the application to pay the fee, but delaying payment will provide an opportunity for another person to file an opposition as any application can be opposed up until the registration certificate is issued.

For this reason, a precedent letter requesting payment of the fee to trust in anticipation is included in the package.

6          Opposition

Trade mark applications are sometimes opposed. The usual reason for objection is a claim by the owner of another trade mark that your client’s application is identical or similar to theirs. If anyone does oppose your client’s application they are required to notify you and provide you with the grounds of their opposition. IP Australia will also contact you to notify you of the process of dealing with the opposition. You can withdraw or amend a trade mark application.

6.1      Amending an application

How you go about this depends on whether you request the change before or after details of the application have been published. Only minor changes, such as clerical errors or obvious mistakes may be made.  The form to use in both situations is the Request to Amend a Trade Mark Application or Registration. Administrative changes to a trade mark’s registration, such as change of address details are made on form Notification of Change of Name and Address for Service.

The types of amendments are limited as applications are usually published within days, and sometimes on the same day, as application.  Contact IP Australia without delay by phone and confirm the amending details by fax or email immediately.  The application is only held for a day after this contact and if details have not been confirmed, the application will be published as originally lodged.

Your request for amendment should:

  • include a pre-filing number (for electronic applications)
  • include the applicant name, trade mark and classes (for paper applications)
  • include the required fee if you are adding extra classes of goods and services
  • identify what amendments are being requested and may be accompanied by a substitute application form with the proposed amendments made on it.

Even if the application has been published, it may still be possible to amend it, though usually only minor changes are possible. Those changes may be requested, made by phone and must be confirmed in writing. It is difficult to add extra classes of goods or services.  A trade mark examiner would need to consider that request.  The request should:

  • be in writing;
  • include the trade mark number; and
  • include details of the requested change.

The types of amendment after registration may include:

  • Correcting office errors
  • Future reclassification of goods or services
  • Amending the registered trade mark as published (as long as the identity of the trade mark is not affected)
  • Amending the goods and/or services covered by the registration or any other particulars of the registration, as long as these changes do not extend the trade mark owner’s rights in the registration.
  • Amending the certificate of registration, after a trade mark’s registered particulars have been changed.

7          Withdrawing an application or cancelling a registration

You can withdraw an application at any stage up to registration or cancel it after registration.  It may also be appropriate to withdraw an application if it is opposed and objections to the opposition cannot be overcome.

8          International Trade Marks

In 2001 Australia became a signatory to the Madrid Protocol which covers international registration of trade marks. This protocol provides Australian applicants with several advantages when seeking protection for trade marks in any of the other signatory countries of which there are approximately 70.

The advantages to using the Madrid Protocol system include:

  1. Only a single international application is required;
  2. It is in one language, English, Spanish or French;
  3. It is filed through the trade marks office of the home country; and
  4. Protection can be sought in one, some or all of the other member countries.

Your client can also still file an application directly with each country in which it seeks trade mark registration. Consider whether:

  1. Those countries are members of the Madrid Protocol;
  2. Your client is eligible to file an international application under the Madrid Protocol; and
  3. The scope of the relevant Australian trade mark includes all the goods and/or services your client wishes to protect overseas.

The World Intellectual Property Organization (WIPO) web site contains the Madrid Protocol and the common regulations, general information, WIPO’s guide to international registration, a fee calculator and Madrid Express.

Madrid Express is a database containing information on new international applications that have been received by the international bureau as well as all international registrations.

IP Australia provides an International Trade Marks Application Kit.

This pack covers all the basic information you may need when applying to register an international trade mark and filing under the Madrid Protocol: how to apply, what happens after filing, and how to maintain your registration.

Note that as an international application depends on the home register for the first five years, that a cancellation or restriction on the home registration will similarly lead to a restriction or cancellation of the foreign registration.

9          After Registration

The initial registration period is 10 years from the date the application was filed. Note this date in your client’s IP register.

Registered trademarks can be renewed, indefinitely, for 10 year periods.

Our final letter to the client advises them of this and of other matters relevant to your client once your client’s trade mark is registered including the requirement that your client ‘use or lose’ the trade mark.

Your client should also consider protecting its trademarked goods against the importation of goods which infringe the trade mark by using the Australian Customs Service’s Notice of Objection scheme.  Once a Notice is in place, Customs can seize goods suspected of infringing the trade mark.

If the trade mark is not used, it may be vulnerable to an application to have it removed.  However, cases establish that only a low level of use is needed to resist such an application – but the use must be in respect of the goods or services for which the mark is registered.

Hills Holdings v Bitek Pty Ltd [2011] FCA 94

10      Assignment of trade marks

An assignment of a trade mark is a fairly simply process. The relevant form must be lodged with IP Australia, and there are no fees payable.

See Application to record assignment or transmission of a trade mark.

11      Licensing of trade marks

Your client may as part of their overall asset protection strategy (which separates business assets from trading risk) wish to licence the use of the trade mark owned by an asset-holding entity to a trading entity.

It is important to have strong contractual terms which set out the agreed limits on the authorised manufacturer or distributor in marketing or selling the goods, and which specify the territories in which such goods can be made or sold.

We have provided a precedent for this purpose.

Your client might consider securing the obligations under the IP licence with a general security charge over the circulating and non circulating assets of the trading entity, if a company– see Companies, Trusts, and Partnerships precedents. This charge must be registered on the Personal Property Securities Register.

 

12      Enforcing trade mark rights

It is important to take quick and decisive action if it is suspected that your client’s rights in the intellectual property connected with their business is being, or is in danger of being, infringed. If intellectual property rights cannot be enforced then their commercial value is quickly eroded. Examples of urgent applications which can be made are Anton Piller orders, applications for preliminary discovery and applications for interim injunctions.

 

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