Template for licensing an established trademark to a business abroad that will use the trademark on new categories of products.
An international business transaction requires a precise and detailed underlying contract. However, it can be expensive and time-consuming to draft such a contract oneself. The ICC Model International Trademark Licence responds to the market’s need for a reliable and equitable template, providing a set of clear and concise standard provisions regarding licensing of a known trademark for use on different products that will save parties time and money in the negotiation process.
Licensing trademarks is a staple of modern business practice, affecting large and small companies alike, across the spectrum of industries.
This ICC model addresses the situation where the owner of a well-known trademark licenses the trademark to a company which will use it with respect to products not manufactured or sold by the licensor. In this case, it is assumed that the licensed products will be designed and developed by the licensee, and that the main preoccupation of the licensor is to ensure that the licensed products conform to the overall image of the licensor and its trademarks.
Given the wide variety of situations falling within the scope of this model (trademark licenses of this type are by their very nature rather different from case to case) users are advised to use the model as a basis for negotiating and drafting their contract, which will need to be adapted to fit the individual situation, possibly with the assistance of a lawyer with expertise in international contracts.
The “typical” scenario considered in this model involves the licensee designing and developing the products it wishes to manufacture under license, and the licensor’s role is mainly to make sure that the products proposed by the licensee have the required quality level and conform to the licensor’s corporate image.
However, there are also cases where the licensor wants to exercise stricter control over its corporate image and therefore participates directly in the development of the licensed products, particularly with respect to their design. In such cases, the design might be carried out by the licensor and the licensee would develop the products in conformity with licensor’s design. The licensed product in this case would be the result of a cooperation between the parties, which might give rise to a number of issues the parties should consider in the contract.