Trademark License Agreement Territory

France – FI How do you protect yourself from the fact that they sell outside the territory? It`s a bit difficult because you have a lot of licenses for areas in the European market. We recently had an example where the right to exploit the IP rights of a famous brand on the Benelux market in the Benelux market and in Poland was sold to two different licensees, with another licensee in Poland. The licensor has introduced a minimum guarantee to compare royalties for the two territories with each licensee. Choice of Law & Forum – Choice of law provisions are preferred because they provide some certainty as to the application of the license agreement. In addition, courts often impose the choice of jurisdiction clauses as long as the forum has a reasonable and logical relationship with the parties and the license. There was, for example, the well-known judgment of the Court of Justice of the European Communities in the Premier League case, which disqualified the restriction imposed on licensees in certain regions of the EEA on the sale of decoders accessible from anywhere in the EEA and considers such a restriction on sales to be a restriction enshrined under Article 101 TFEU. A well-crafted license agreement should specifically identify all registered IP addresses, pending or unregistered IP addresses, unpublished IP addresses, or trade secrets. This can put you in trouble because some clients don`t really know what their trade secrets are and have to put in time and effort to find out. You must specify that authorized products, services or processes may only be valued for defined purposes, products or uses. For trademarks, indicate that the trademark can only be valued in combination with defined goods or services.

Also indicate the geographic area or industry and indicate whether the license is exclusive or not. A good faith clause must be included in the contract stipulating that any licensee must act in good faith to protect the territory of each licensee within Europe. These are some of the most common provisions contained in a trademark license agreement, if you need advice on more detailed matters, please contact our office for a courtesy consultation with one of our trademark attorneys. Remuneration – A common form of remuneration is a royalty based on the percentage of net sales. The licensor may even wish to verify the licensee`s operation to ensure that the licensor is duly compensated. This can be defined in a registration and monitoring clause. The licensor may also wish for some form of assurance that the licensee will make its best efforts to use the licensed marks. This may take the form of a «best efforts» clause or there may be a minimum licence fee. Quality Control – A detailed quality control clause is essential for a trademark license. Control of the licensor is necessary, as the trademark constitutes the reputation and goodwill of the owner. For purchasing decisions, consumers rely on the reputation of a trademark owner with respect to the quality of goods or services. It is typical for the licensee to recite that «all goodwill acts for the benefit of the licensor».

In cases where the content of the intellectual property or the will of the licensor and the licensee are assigned a very strict national or regional character, a thorough analysis should be carried out on a case-by-case basis in order to determine the content and effects of the restriction. Arbitration – In the event of a dispute under the license agreement, it is customary to provide that the dispute is settled by arbitration, as this is an inexpensive method. The clause specifies whether the arbitration procedure is binding on the parties and the type of remedy obtained by the arbitration. . . .