Canadian Trademark Registration: Licensing Your Trademark
So you want to license your registered trademark? Below's a brief overview of some of the most vital concerns when licensing a TM in Canada. Trademark licensing is a sophisticated subject and this is by no suggests an exhaustive list. However, it does provide a short outline of the necessities for trademark licensing under Section 50 of the Trademark's Act Canada.
Despite the reality that the Trademark's Act does not involve a penned agreement involving a licensor and licensee, it is constantly recommended to set your agreement in composing. A Canadian TM attorney professional in TM licensing can assist you draft a watertight licensing agreement – a single that satisfies all of the needs of the Trademark's Act Canada.
It is vital to make certain that the licensor is the real operator of the registered TM in Canada. The CIPO trademark sign-up lists the operator (s) of all Canadian trademark registration, so it is pretty straightforward to validate ownership prior to getting into into a license agreement. Additionally, if you are a sublicensee, you need to make sure your sublicense is permitted both by the licensee and also by the licensor. The primary principle is that the license need to be granted by the operator of the registered trademark in Canada.
It is essential when you are the licensor to make sure that you set meaningful quality criteria by which the licensee will have to strictly comply. You should also review the licensee's activity to assure that they are in compliance with the phrases of your licensing agreement. If they are not in compliance with your created agreement, your trademark lawyer may well recommend you to terminate the agreement completely. This will show that you are keeping direct manage above the character, top quality and use of the registered trademark in accordance with the Trademark's Act Canada.
One more necessity is that the licensee must evidently discover to the general public that the TM is becoming made use of underneath license. In carrying out so, they will need to also identify the operator of the mark. The purpose for this is that license agreements are found by Canadian regulation as weakening TM registration (Canada only). This is weakening of a trademark's distinctiveness can occasionally final result in the invalidation of the registered trademark . For this reason, Portion 50 of the Trademark's Act Canada needs that the owner retain control more than their registered trademark to the extent that the general public is on detect. This is why you'll usually see the following language associated with a accredited registered trademark: “ACME is a registered trademark of the ACME Company applied beneath license by Jane Licensor”
