<\/p>\n
In this post we talk about:<\/p>
- Trademark Licence Agreement: what the law provides for<\/a><\/li>
- Trademark license agreement: exclusive, non exclusive and territorially limited<\/a><\/li>
- Royalties in the trademark license agreement<\/a><\/li>
- Trademark license agreement in EU law<\/a><\/li>
- Trademark license agreement and consumer protection<\/a><\/li><\/ul><\/div><\/p>\n
Trademark Licence Agreement: what the law provides for<\/span><\/h2>\n
With regard to the trademark license agreement, Article 23, paragraph 2 of the Italian Industrial Property Code provides that:<\/p>\n
\u201cA trademark may be licensed, also on a non-exclusive basis, for all part of the products or services for which it is registered and for the whole or part of the territory of the Country provided that, in case of a non-exclusive license, the licensee expressly undertake to use the trademark to distinguish the products or services\u00a0 equal to those traded or rendered in the territory of the Country with the same trademark by the holder of any other licensees\u201d<\/p><\/blockquote>\n
Trademark license agreement: exclusive, non exclusive and territorially limited<\/span><\/h2>\n
There exist several types of trademark license agreements, let\u2019s see them in detail:<\/p>\n
The trademark license agreement is exclusive<\/strong> when the use of the trademark is given to one subject only and it can be:<\/p>\n
- \n
- Total License<\/strong>, when it concerns all the goods and\/or services distinguished by the trademark;<\/li>\n
- Partial License<\/strong>, when it concerns only some of the goods and\/or services distinguished by the trademark<\/li>\n<\/ul>\n
With the\u00a0non-exclusive license<\/strong>\u00a0(which can be total or partial), a trademark owner can:<\/p>\n
- \n
- To grant one (or more) licensees the right to use the trademark reserving to itself, however, the right to continue using the mark;<\/li>\n
- To grant more licensees the right to use the trademark through several trademark license agreements.<\/li>\n<\/ul>\n
Through a territorially limited license<\/strong>\u00a0it is possible\u00a0to limit the places in which the license is granted: for example, you can sign a license agreement in which you grant to use an Italian trademark only limited to Lazio region or only limited to the province of Rome.<\/p>\n
Royalties in the trademark license agreement<\/span><\/h2>\n
For the granting of the license, the licensee (ie the one to whom the use of the trademark is granted) will pay\u00a0royalties of a percentage value<\/strong> calculated on the net price of each sold product or service identified by the trademark. License agreements<\/strong><\/a> usually provide that the licensee pays royalties calculated for each year of the contract\u2019s validity.<\/p>\n
In some license agreements, finally, the fee is not calculated with the royalties but on a flat rate basis and in a single solution.<\/p>\n
Trademark license agreement in EU law<\/span><\/h2>\n
You can find identical rules for EU trademark with regard to the possibility of an exclusive or non-exclusive license agreement, total or partial license and territorial limits.<\/p>\n
Article 25, paragraph 1 of the European Union Trademark Regulation states that:<\/p>\n
\u00a0\u201cA EU trademark may be licensed for some or all the goods or services for which it is registered and for the whole or part of the Union. A license may be esclusive or non-exclusive.\u201d<\/p><\/blockquote>\n
Trademark license agreement and consumer protection<\/span><\/h2>\n
In the light of the above,\u00a0it is possible that the same mark is used to distinguish products coming from different companies\u00a0<\/strong>(namely, licensees of the same brand).
\nThe law intervenes to prevent\u00a0deception for the public<\/strong><\/a>\u00a0and therefore requires the same level of quality among the products, no matter if they come from different companies.<\/p>\n
- Partial License<\/strong>, when it concerns only some of the goods and\/or services distinguished by the trademark<\/li>\n<\/ul>\n
- Trademark license agreement: exclusive, non exclusive and territorially limited<\/a><\/li>