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Trademark Agreement for New Zealand

Trademark Agreement Template for New Zealand

A comprehensive legal agreement governed by New Zealand law, specifically under the Trade Marks Act 2002 and related legislation, that establishes the terms and conditions for the use of registered or pending trademarks. The document outlines the rights granted by the trademark owner to the licensee, including usage permissions, territorial limitations, quality control requirements, and compensation terms. It incorporates essential provisions for trademark protection, enforcement mechanisms, and compliance with New Zealand intellectual property laws while ensuring both parties' interests are protected in the commercial exploitation of the trademark.

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What is a Trademark Agreement?

The Trademark Agreement is essential for businesses and individuals looking to license or permit the use of their trademarks in New Zealand. This document is particularly relevant when a trademark owner wishes to maintain control over their intellectual property while allowing others to use it commercially. The agreement, governed by New Zealand law including the Trade Marks Act 2002, typically covers crucial aspects such as license scope, quality control, royalty payments, and enforcement rights. It's commonly used in franchise arrangements, brand licensing, merchandising deals, and international brand expansions where protecting trademark rights is paramount. The document ensures compliance with New Zealand's intellectual property regime while providing clear guidelines for trademark usage and dispute resolution.

What sections should be included in a Trademark Agreement?

1. Parties: Identification of the trademark owner (licensor) and the party receiving rights to use the trademark (licensee), including full legal names and addresses

2. Background: Context of the agreement, including ownership of the trademark(s) and the purpose of the arrangement

3. Definitions: Detailed definitions of key terms used throughout the agreement, including 'Licensed Marks', 'Territory', 'Term', and 'Licensed Products/Services'

4. Grant of License: Specific rights being granted, including type of license (exclusive/non-exclusive), territory, and scope of permitted use

5. Term and Termination: Duration of the agreement, renewal provisions, and circumstances allowing termination

6. Quality Control: Standards and requirements for trademark usage, including approval processes for new uses

7. Payment Terms: License fees, royalties, payment schedule, and calculation methods

8. Protection of the Marks: Obligations regarding trademark protection, infringement reporting, and enforcement

9. Representations and Warranties: Statements about trademark ownership, right to license, and validity

10. Confidentiality: Protection of confidential information exchanged during the agreement

11. General Provisions: Standard clauses including governing law, dispute resolution, and entire agreement

What sections are optional to include in a Trademark Agreement?

1. Sub-licensing Rights: Include when licensee is permitted to grant sub-licenses to third parties

2. Territory Expansion: Include when there's potential for geographic expansion of trademark usage

3. Marketing and Promotion: Include when specific marketing requirements or restrictions need to be detailed

4. Online Usage: Include when trademark usage extends to websites, social media, or e-commerce

5. Registration Responsibilities: Include when licensee has rights or obligations regarding trademark registration

6. Change of Control: Include when agreement needs to address ownership changes of either party

7. First Right of Refusal: Include when licensee is granted priority rights for additional territories or products

What schedules should be included in a Trademark Agreement?

1. Schedule 1 - Licensed Marks: Detailed list of all trademarks covered by the agreement, including registration numbers and status

2. Schedule 2 - Licensed Products/Services: Comprehensive list of products or services for which the trademark usage is permitted

3. Schedule 3 - Brand Guidelines: Specific requirements for trademark display, usage, and placement

4. Schedule 4 - Quality Control Procedures: Detailed procedures for quality assurance and approval processes

5. Schedule 5 - Territory Definition: Detailed description of geographic areas where trademark usage is permitted

6. Schedule 6 - Fee Schedule: Detailed breakdown of all fees, royalties, and payment terms

7. Appendix A - Trademark Specimens: Visual representations of the trademarks in their approved forms

Authors

Alex Denne

Head of Growth (Open Source Law) @ Ƶ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

New Zealand

Publisher

Ƶ

Document Type

Licensing Agreement

Sector

IP

Cost

Free to use
Relevant legal definitions



























Clauses
































Relevant Industries

Retail

Manufacturing

Consumer Goods

Fashion and Apparel

Technology

Food and Beverage

Pharmaceuticals

Entertainment

Sports and Recreation

Professional Services

Education

Media and Publishing

Franchising

E-commerce

Relevant Teams

Legal

Intellectual Property

Brand Management

Commercial

Licensing

Marketing

Business Development

Compliance

Corporate Affairs

Product Development

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Manager

Licensing Director

Commercial Manager

Franchise Manager

Business Development Manager

Trademark Attorney

General Counsel

Corporate Lawyer

Compliance Officer

Marketing Director

Chief Legal Officer

Product Manager

Merchandising Manager

Industries






Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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