Trade Mark Licences

A trade mark licence is where the owner of a trade mark (registered or unregistered) permits another person to use that trade mark in relation to the goods and/or services for which it is registered or associated with.

The need for a trade mark licence can arise in many situations and the terms of such licences are almost entirely at the discretion of the parties to such licence agreements. Such licences may also generate the obligation of the user of the trade mark (the licensee) to pay money (usually referred to as royalties) to the trade mark owner (also called the licensor).

A trade mark licence can also be unwritten (provided it is not an exclusive licence) or implied into a particular relationship. However, as with any unwritten agreement, the terms of that licence are far from clear. In addition, an unwritten trade mark licence is unlikely to assist in defending a trade mark registration from a non-use attack, if the licensed use was the only use.

It is likely that each trade mark licence will be different to reflect the nature of the trade mark and the goods and/or services sold in relation to that trade mark. The commercial balance of the deal struck in the licence agreement will depend on many factors such as whether the licence is exclusive or non-exclusive, the scope of the licence, both in terms of the type of goods and/or services that the licensee can use the trade mark for, the geographic scope of the licence, the liability position if the licensee gets sued for trade mark infringement for use of the trade mark in the manner prescribed under the licence agreement.

Commercial provisions such as calculation of the royalties or fees to be paid by the licensee in exchange for use of the trade mark, the duration of the licence and the rights or either party to terminate the licence before the agreement expires also need to be agreed. Many of these terms will actually fall into place relatively simply based on the situation in which the need for the licence arises, particularly if experienced IP lawyers are acting to assist each party.

Examples of situations where a trade mark licence may be required include:

  • a franchise arrangement where the franchisor licences to the franchisee the right to use the brand of the franchise;
  • where a company is selling off a non-core business, but the buyer requires the ongoing use of the brands for the foreseeable future or a limited period of time sufficient to allow transition of the business from the seller’s brand to the buyer’s brand or a new brand; or
  • in settlement of a trade mark infringement action, where the trade mark owner may permit the alleged infringer to use the trade mark for a limited period of time to, again, to allow transition from the infringing trade mark to a new (non-infringing) trade mark.

Call us today for assistance with trade mark LICENSING.

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  • Hanna Myllyoja

    "Marshall IP Group has been assisting SAI Global with its trade mark, IT and other intellectual property agreements for over 4 years now. They have demonstrated a good understanding of our businesses and services and this commercial understanding is applied to the legal advice and assistance they have provided. They have shown expertise beyond their size and (regional) location and an ability to stand their ground against their City counterparts: you get the quality of a city law firm partner but you are not charged the big city law firm rates. They are pro-active, commercially sensible and this has given me, as a busy in-house Corporate Counsel and Company Secretary, peace of mind in relation to SAI Global’s national and international IP Portfolio and other legal needs. "

    Hanna Myllyoja - Group General Counsel & Company Secretary, SAI Global Ltd (ASX:SAI)
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    "Marshall Marks has recently filed a large number of trade mark applications for us and has a high level of success in terms of getting marks registered with the minimum of fuss and additional costs. They have well established processes that identify problems early on so that time and money is not wasted on problematic applications and deliver their services promptly in a courteous and professional manner. They have demonstrated a strong ability to handle a large and growing IP Portfolio in the very competitive drinks sector of the market. I would recommend them to any company that wants to get a grip on its IP."

    Michael Bynon - General Manager Business Development – Private and Exclusive, Kollaras & Co Pty Ltd
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    "Marshall IP Group has been a supporter of the iAccelerate from its very beginnings. iAccelerate is a state of the art incubator for start-ups and early stage technology businesses located at the University of Wollongong’s Innovation Campus. Marshall IP Group’s CEO, Tim Marshall, has provided thorough, thoughtful and insightful contributions to iAccelerate providing informative seminars, workshops and advice for many of iAccelerate’s companies. Marshall IP Group demonstrates a commitment to the innovation agenda for Australia and the Illawarra region. "

    Dr Elizabeth Eastland - Founder and Former CEO, iAccelerate, Current General Manager, Strategy, Market Vision and Innovation, CSIRO.
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    "I am delighted to recommend Tim Marshall and the team at Marshall IP Group for all aspects of intellectual property and technology law. Marshall IP Group fills an important space in the legal market in regional Australia and Australian capital cities. The businesses that I am heavily involved in, RMB Lawyers and Unison Outsourcing, have both enjoyed excellent advice and customer service from Marshall IP Group in relation to trade marking our businesses and protecting our brand."

    Craig Osborne - Managing Partner, RMB Lawyers and CEO, Unison Outsourcing Pty Ltd
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    "Entering the world of trademarks and IP, as a means of protecting our brand both now and in the future, was met with an unclear understanding of where we could turn for assistance. Tim and his amazing team at Marshall IP Group have made the whole process a hassle free one and we confidently recommend their services to anyone wanting to add value to their brand and business. "

    Tanya Van Der Water - CEO, Buckaroo Leatherworks Pty Ltd.
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