Seleccionar página

Licensing a trademark poses a large number of problems that do not arise when selling trademarks. Unless it gives specific assurances and guarantees, the status of a trademark (reinstatement, surrender, infringement of other marks, etc.) is irrelevant to a trademark owner who sells the entire bundle of rights to a trademark. When it comes to licensing agreements, the owner should be aware of these issues and know the impact of the licensee`s use of the trademark on the owner`s property. Trademark owners can prove the use necessary to become rights holders by third parties. For example, the proper use of a mark by a lessee benefits the owner; Therefore, trademark owners can rely on use by controlled licensees to demonstrate the continued use of a trademark. Section 5 of the Lanham Act expressly recognizes the acquisition of trademark rights by a licensor through the first use of the trademark by a controlled licensee. Section 1055 of 15 USC provides that «when the first use of a mark by a person is controlled by the registrant or applicant for the mark with respect to the nature and quality of the goods or services; this first use must benefit the registrant or applicant. Therefore, while continuous and bona foia use of a mark is necessary to justify trade mark rights, such use may be made by another party in favour of the proprietor of the trade mark. As with a contract, the owner is usually asked to give certain assurances and guarantees, which are usually the same as for a market. Additional clauses of a licence agreement include: on the basis of the text of the licence agreement, the Court concluded that it had not granted the exclusive licensee a right of ownership of the trade mark or rights equivalent to those of a beneficiary.

As a result, the licensee did not have the opportunity to bring an infringement action to enforce rights in the licensed trademark. To justify its use, the mark must be affixed to the product or used in the sale or provision of services sold to the public, and its use must be continuous and in good faith. The extent of the activity sufficient to justify use is a question of fact that is determined on a case-by-case basis. The main idea is that the activity must be sufficiently public to identify or distinguish the goods or services among the transport categories concerned from those of the proprietor of the trade mark. The mere intention to use a trademark is not sufficient to create common law rights. You may have already seen the video about brand licensing, and I say there are two ways to have someone else use their brand. One is the brand assignment agreement, which is the theme of today`s video, and the other is the brand license agreement…