Legal risks in trademark licensing contracts

1. Contract parties and legal risks

The licensed trademark must be a registered trademark, and the licensor must be a registered trademark Everyone. According to relevant regulations, if you use the trademarks of human medicines, medical nutritional foods, medical nutritional beverages and baby food, the licensee must provide certification documents from the health administrative department; if you use the trademarks of cigarettes, cigars and packaged cut tobacco, you will be The licensor needs to provide documents proving production approval from the national tobacco administration department. If the licensee is outside the mainland of my country, such documents are not required. If the parties to the contract fail to comply with the relevant provisions, they are deemed to be ineligible entities without legal qualifications, thus leading to legal risks of invalidating the contract.

2. Legal risks of over-scope licensing

The goods or services for which the licensee uses the licensed trademark shall be consistent with the goods or services approved for use by the Trademark Office, and shall not exceed The scope of goods or services approved by the Trademark Office. Once the license is used beyond the scope of the license, the licensee's use of the trademark beyond the scope may infringe the trademark rights of others and be held accountable for infringement by others; the licensor also faces legal risks such as invalidity of the contract and breach of contract.

3. Legal risks of improper use of trademarks

According to regulations, some licensees conceal the actual name of the producer and place of origin in order to prevent the goods from being considered as OEM products. This kind of Improper use of trademarks will lead to administrative legal risks and civil legal risks. According to legal provisions, in this case, the industrial and commercial administration authority where the licensee is located may order the licensee to make corrections within a time limit, confiscate its trademark and logo, and may impose a fine of less than 50,000 yuan depending on the circumstances. In addition, if the licensee violates the obligation to use the trademark normally under the trademark license contract, he will face the legal risk of being liable for breach of contract.

4. Licensing contract filing and legal risks

Article 26 of the "Trademark Law" stipulates: Trademark licensing contracts must be reported to the Trademark Office for filing. Article 43 of the "Regulations for the Implementation of the Trademark Law" stipulates: If someone licenses others to use his or her registered trademark, the licensor shall submit a copy of the contract to the Trademark Office for record within 3 months from the date of signing the trademark license contract. It is generally believed that the filing of a trademark license contract is not a condition for the validity of a trademark license contract, but is merely a procedural requirement. However, the trademark license contract has not been recorded and cannot be effective against third parties. At this time, if the trademark owner transfers the trademark, the new transferee may exclude the licensee's right to use the trademark. Therefore, although failure to register does not affect the validity of the license contract, it also creates legal risks for the licensee.