The Trademark License Agreement is a crucial legal instrument used when a trademark owner wishes to permit another party to use their trademark(s) while maintaining control over their intellectual property. This document is essential in the Canadian market where trademark protection is federally regulated under the Trademarks Act, with additional considerations for provincial laws. It's commonly used in business expansions, brand collaborations, merchandising arrangements, and franchise operations. The agreement typically includes detailed provisions for quality control (which is particularly important under Canadian trademark law to maintain the trademark's validity), territory restrictions, royalty structures, and compliance requirements. It serves to protect both the licensor's trademark rights and the licensee's investment while ensuring proper trademark usage in the marketplace.
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1. Parties: Identification of the Licensor and Licensee, including full legal names and addresses
2. Background: Context of the agreement, description of the trademark(s), and the parties' intentions
3. Definitions: Definitions of key terms used throughout the agreement
4. Grant of License: Scope of the license, including territory, exclusivity/non-exclusivity, and field of use
5. Term: Duration of the license agreement and renewal provisions
6. Payment Terms: License fees, royalties, payment schedule, reporting requirements, and audit rights
7. Quality Control: Standards for trademark usage, approval processes, and quality maintenance requirements
8. Protection of the Trademark: Obligations regarding trademark protection, infringement reporting, and enforcement
9. Representations and Warranties: Parties' assertions regarding trademark ownership, right to license, and other material facts
10. Compliance with Laws: Obligations to comply with applicable laws and regulations
11. Termination: Grounds for termination, termination process, and post-termination obligations
12. General Provisions: Standard contractual provisions including notices, governing law, and dispute resolution
1. Sublicensing Rights: Include when the licensee is permitted to sublicense the trademark to third parties
2. International Rights: Include for cross-border licensing arrangements addressing international trademark rights
3. Marketing and Promotion: Include when specific marketing requirements or restrictions need to be detailed
4. E-commerce Provisions: Include for licenses involving online use of the trademark
5. Change of Control: Include when the agreement should address ownership changes of either party
6. Rights of First Refusal: Include when granting priority rights for additional territories or products
7. Insurance Requirements: Include when specific insurance coverage is required for the licensee
8. Environmental and Social Responsibility: Include when brand value requires specific sustainability or social responsibility commitments
1. Schedule A - Licensed Trademarks: Detailed list and images of all licensed trademarks, including registration numbers
2. Schedule B - Licensed Products/Services: Comprehensive list of products or services covered by the license
3. Schedule C - Quality Standards: Detailed quality control specifications and requirements
4. Schedule D - Royalty Calculations: Detailed methodology for calculating royalties
5. Schedule E - Approved Forms of Trademark Use: Examples and guidelines for acceptable trademark usage
6. Schedule F - Territory Definition: Detailed description of geographical territories covered by the license
7. Appendix 1 - Trademark Style Guide: Technical specifications for trademark reproduction and usage
8. Appendix 2 - Approval Procedures: Detailed procedures for obtaining approval for trademark usage
Relevant legal definitions
Clauses
Relevant Industries
Retail
Consumer Goods
Fashion and Apparel
Food and Beverage
Technology
Entertainment
Sports
Pharmaceuticals
Automotive
Education
Franchising
Manufacturing
Media and Publishing
Luxury Goods
Software and Gaming
Relevant Teams
Legal
Intellectual Property
Brand Management
Commercial
Business Development
Compliance
Marketing
Product Development
Finance
Operations
Relevant Roles
Legal Counsel
Intellectual Property Lawyer
Brand Manager
Licensing Manager
Commercial Director
Chief Legal Officer
Business Development Manager
Contract Manager
Trademark Attorney
Chief Executive Officer
Chief Commercial Officer
Franchise Manager
Compliance Officer
Marketing Director
Product Development Manager
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