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Trademark License Agreement for New Zealand

Trademark License Agreement Template for New Zealand

A Trademark License Agreement under New Zealand law is a legally binding contract that grants permission to use a registered trademark or brand. The agreement is governed by the Trade Marks Act 2002 and related New Zealand legislation, establishing the terms under which the licensee may use the licensor's trademark(s) in connection with specific products or services. It includes essential provisions for quality control, payment of royalties, territorial restrictions, and trademark usage guidelines, while ensuring compliance with New Zealand's intellectual property and commercial law framework.

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What is a Trademark License Agreement?

A Trademark License Agreement is essential when a trademark owner (licensor) wishes to permit another party (licensee) to use their registered trademark(s) while maintaining control over their intellectual property. This agreement type is particularly relevant in New Zealand, where trademark protection is governed by the Trade Marks Act 2002 and must comply with local commercial law requirements. The document establishes the scope of permitted use, quality standards, financial terms, and territorial limitations. It's commonly used in franchise arrangements, brand expansions, merchandising deals, and international market entry strategies. The agreement ensures the trademark owner maintains control over their brand while allowing others to commercially exploit it under controlled conditions.

What sections should be included in a Trademark License Agreement?

1. Parties: Identification of the Licensor and Licensee with full legal names and addresses

2. Background: Context of the agreement, including details of trademark ownership and registration

3. Definitions: Defined terms used throughout the agreement, including 'Licensed Marks', 'Territory', 'Licensed Products/Services'

4. Grant of License: Scope of the license granted, including territory, exclusivity/non-exclusivity, and permitted uses

5. Term and Renewal: Duration of the license agreement and conditions for renewal

6. License Fees and Royalties: Payment terms, calculation of royalties, reporting requirements, and audit rights

7. Quality Control: Standards for use of the trademark and quality requirements for licensed products/services

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

9. Use of the Trademark: Specific requirements and restrictions for trademark usage

10. Representations and Warranties: Legal assurances from both parties

11. Termination: Grounds for termination, termination process, and post-termination obligations

12. General Provisions: Standard legal clauses including governing law, dispute resolution, and notices

What sections are optional to include in a Trademark License Agreement?

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

2. Minimum Performance Requirements: Include when there are specific sales targets or performance metrics

3. Marketing and Promotion: Include when specific marketing obligations or restrictions apply

4. Territory Restrictions: Include when there are specific geographical limitations or requirements

5. Online Usage: Include when the trademark will be used in digital contexts

6. Competition Restrictions: Include when there are non-compete or exclusivity provisions

7. Change of Control: Include when the agreement should address ownership changes of either party

8. Insurance Requirements: Include when specific insurance coverage is required

What schedules should be included in a Trademark License Agreement?

1. Schedule 1 - Licensed Trademarks: Detailed list of all licensed trademarks including registration numbers and classes

2. Schedule 2 - Licensed Products/Services: Comprehensive list of products/services covered by the license

3. Schedule 3 - Quality Standards: Detailed quality control specifications and requirements

4. Schedule 4 - Brand Guidelines: Specific requirements for trademark usage, including format, colors, and positioning

5. Schedule 5 - Territory Definition: Detailed description of geographical areas covered by the license

6. Schedule 6 - Royalty Calculations: Detailed methodology for calculating royalties and reporting requirements

7. Appendix A - Approval Procedures: Step-by-step procedures for obtaining approval for trademark usage

8. Appendix B - Reporting Ƶ: Standard forms for sales reporting and royalty calculations

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

Consumer Goods

Fashion and Apparel

Food and Beverage

Technology

Entertainment

Sports and Recreation

Pharmaceuticals

Manufacturing

Franchising

Media and Publishing

Software and IT

Education

Professional Services

Relevant Teams

Legal

Intellectual Property

Brand Management

Commercial

Licensing

Business Development

Compliance

Marketing

Finance

Risk Management

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Manager

Commercial Director

Licensing Manager

Business Development Manager

Compliance Officer

Contract Manager

Chief Legal Officer

Marketing Director

Chief Commercial Officer

Trademark Attorney

General Counsel

Finance Director

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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