An infringement of competition law may lead to the inapplicibility of the trademark license agreement and to the imposition of fines on the parties. Advice to more than one licensor or licensee In some countries, it is mandatory to register a trademark license against the registration of the trademark in the national trademark registry. In other countries, it is not possible to register a trademark license. Most countries (including the UK) are somewhere in between; In other words, it is possible, but not mandatory, to register the license, and there are some advantages for the licensee and sometimes for the licensor. We can advise you on this on a country-by-country basis. Use this trademark license agreement if you want to grant someone an exclusive, non-exclusive, or exclusive license to use your trademark for certain products. Use this agreement to set out clear terms and obligations for both parties. a royalty rate based on the licensee`s net turnover on licensed products As a general rule, non-UK resident licensors are subject only to income tax attributable to an establishment of that licensor in the United Kingdom; or to the extent that the tax must be withheld by the licensee. Can unregistered trademarks or other intellectual property rights that are not registered be licensed in your jurisdiction? Serious breaches of these prohibitions are punishable by heavy penalties. Agreements which infringe Article 101 and the prohibition in Chapter I may be partially or totally unenforceable. These agreements may be investigated by the competition authorities (in the United Kingdom, the CMA) or the European Commission, and may also be the subject of private disputes. The TMA establishes similar provisions with regard to trademarks.
§ 31 TMA 1994 provides that, where an exclusive trademark licence stipulates that the licensee has the same rights as if the licence were an assignment, he may bring an action in his own name. If the exclusive licensee and the trademark owner simultaneously have the right to initiate infringement proceedings, both may bring legal action, but must be both parties to protect a defendant from being sued twice for the same infringement. Where the patent proprietor is involved in proceedings as a defendant, he shall not be held liable for costs unless he participates in the proceedings. The obligation to adhere to the holder or exclusive licensor and the licensee`s ability to avoid cost liability may be excluded by the licensee and the exclusive licensee. If the licensed mark is registered in all or some of the countries covered by the licence, compliance with the trademark laws of those countries should be ensured. It is customary for licensors to structure licenses to obtain the express termination of the license in the event of management or liquidation of the licensee. . .