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.
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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
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
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
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
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