A Trade Mark Licence Agreement is essential when a trademark owner wishes to permit another party to use their registered trademark(s) while maintaining control over their intellectual property. This document, governed by New Zealand law, particularly the Trade Marks Act 2002, establishes the framework for commercial exploitation of trademark rights. It is commonly used in franchise arrangements, brand collaborations, merchandising deals, and international market expansion. The agreement typically includes detailed provisions on quality control, territorial restrictions, royalty payments, and trademark usage guidelines. It protects both the licensor's intellectual property rights and the licensee's commercial interests while ensuring compliance with New Zealand's regulatory requirements.
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1. Parties: Identifies and provides full legal details of the licensor and licensee
2. Background: Sets out the context of the agreement, including details of the trademark ownership and the parties' intentions
3. Definitions: Defines key terms used throughout the agreement
4. Grant of Licence: Specifies the exact rights being granted, including territory, exclusivity, and permitted uses
5. Term and Termination: Defines the duration of the licence and circumstances for termination
6. Licence Fees and Payment: Details the financial terms, including royalties, payment schedules, and reporting requirements
7. Quality Control: Establishes standards for use of the trademark and quality control measures
8. Protection of the Trade Mark: Outlines measures for maintaining and protecting the trademark
9. Representations and Warranties: States the parties' assurances regarding their rights and capabilities
10. Infringement: Procedures for dealing with third-party infringement and enforcement rights
11. Confidentiality: Protects confidential information exchanged during the licence relationship
12. General Provisions: Standard contractual provisions including governing law, notices, and assignment
1. Sub-licensing Rights: Include when the licensee is permitted to grant sub-licenses to third parties
2. Marketing and Promotion: Include when specific marketing requirements or restrictions need to be imposed
3. Territory-Specific Requirements: Include when the licence covers multiple jurisdictions with different requirements
4. Supply Chain Requirements: Include when the licensed products must be sourced from specific suppliers
5. Competition Law Compliance: Include when there are specific competition law considerations that need to be addressed
6. Change of Control: Include when the agreement needs to address consequences of ownership changes
7. Research and Development: Include when the licence involves ongoing product development
8. Insurance Requirements: Include when specific insurance coverage is required for the licensed activities
1. Schedule 1 - Licensed Trade Marks: Detailed list of all licensed trademarks, including registration numbers and classes
2. Schedule 2 - Licensed Products/Services: Comprehensive description of products or services covered by the licence
3. Schedule 3 - Quality Standards: Detailed quality control specifications and requirements
4. Schedule 4 - Licence Fees and Royalties: Detailed breakdown of all financial terms and calculation methods
5. Schedule 5 - Approved Form of Trade Mark Use: Guidelines and examples of acceptable trademark usage
6. Schedule 6 - Territory: Detailed description of the geographical territory covered by the licence
7. Schedule 7 - Reporting Requirements: Templates and specifications for required reports
8. Appendix A - Style Guide: Visual guidelines for trademark usage and brand standards
Relevant legal definitions
Clauses
Relevant Industries
Retail
Consumer Goods
Fashion and Luxury
Food and Beverage
Technology
Pharmaceuticals
Entertainment
Sports and Recreation
Franchising
Manufacturing
Media and Publishing
Software and Digital Products
Relevant Teams
Legal
Intellectual Property
Commercial
Brand Management
Business Development
Compliance
Marketing
Corporate Affairs
Licensing
Product Development
Relevant Roles
General Counsel
IP Lawyer
Commercial Lawyer
Brand Manager
Chief Executive Officer
Commercial Director
Intellectual Property Manager
Legal Counsel
Licensing Manager
Business Development Manager
Chief Legal Officer
Chief Commercial Officer
Trademark Attorney
Contract Manager
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