Drafting a trade mark licence—a practical guide
Drafting a trade mark licence—a practical guide

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Drafting a trade mark licence—a practical guide
  • What is a trade mark licence?
  • Key concerns and practical tips for the licensor
  • Key concerns and practical tips for the licensee
  • Grant of licence
  • Licensing a luxury brand
  • Character merchandising
  • Manufacturing generally
  • Other key clauses
  • Boilerplate
  • more

What is a trade mark licence?

A ‘trade mark licence’ is a permission by the trade mark proprietor to do something which would otherwise be trade mark infringement. A licence may be in respect of all of the rights in the mark, or in relation to only some of the relevant goods or services for which the mark is registered, or in relation to the use of the mark in a particular manner or territory.

The scope of the licence can be exclusive (meaning that only the licensee is entitled to use the trade marks in the territory for the specific purposes, to the exclusion of all others including the licensor), non-exclusive (meaning that the licensee does not have any exclusive right to use the trade marks in the territory and the licensor may therefore grant equivalent or similar licences to third parties) or sole (meaning that only the licensee and the licensor themselves may use the trade marks for the specific purpose in the territory).

The purpose of granting a licence in respect of a trade mark is for the licensor to derive income from the exploitation of the trade mark by the licensee. In some cases, the licensee pays a fixed fee for the licence and, in some cases, a revenue stream is generated by way of a regular