Trademark licensing

Trademark licensing refers to the act of a trademark registrant allowing others to use its registered trademark through legal procedures. When a trademark owner licenses others to use its registered trademark, it usually signs a trademark license agreement with the licensee and authorizes the licensee to use it, thereby obtaining the corresponding license fee. Trademark licensing solves the licensee's urgent need to use the trademark and also brings economic benefits to the licensor. Behind this win-win situation, there are some detailed legal issues.

1. The licensee shall not use the registered trademark on the licensed goods beyond the scope of the license.

In the course of practical operation, the author found that after some licensees obtained the trademark license, Use the licensor's registered trademark beyond the scope of the licensed products. For example, the licensed product category and product content are category 25 clothing. The licensee goes beyond the scope and uses the trademark on category 18 "bags" together with the clothing. Placing.

News reported a case in which Ningbo Customs seized an export case of hardware accessories that infringed upon the "UL and Graphics" trademark rights due to unauthorized expansion of the scope of use. The value involved was as high as 1.008 million yuan. It is reported that a company in Hangzhou declared to Ningbo Customs to export a batch of guide rails, pipe clamps and other hardware accessories. The declared brand was "ekoline" and the value exceeded 1 million yuan. When inspecting this batch of goods, Beilun Customs inspection officers under Ningbo Customs found that in addition to brand, specification and other information, the outer packaging of the goods also had a logo containing the word "UL" printed on it. In addition, all goods are also etched with the word "UL". Customs officers checked the authorization status of the American UL Safety Laboratory in the customs protection filing system and found that there was no licensing information for the company.

In this regard, the customs regulations department contacted the rights holder to verify the authorization status. The results of the verification were surprising. Among the hardware accessories in the two entire containers, only construction connectors were authorized products, and other goods were not authorized. . It turns out that the UL Safety Laboratory of the United States only authorized this company to use the "UL and graphics" trademark on construction joints, but the company arbitrarily expanded the scope of use, resulting in de facto infringement.

It can be seen from the above cases that no matter whether the licensee has subjective malice to deliberately transcend, his behavior of transcending will cause the risk of trademark infringement.

On the one hand, even if the exclusive right to register a product category beyond the scope of the license is in the hands of the licensor, the licensor may not be willing to license the category to the licensee. If the licensee needs to use it, he must obtain new authorization from the trademark owner, otherwise it will constitute trademark infringement. A trademark owner's willingness to license one category does not automatically affect its willingness to license other categories.

On the other hand, the exclusive rights to register trademarks for these product categories beyond the scope of the license may be in the hands of a third party. If the licensee has no legal awareness in this regard and thinks that his use is legal within the scope of the exclusive right to use the trademark, then once a third party pursues rights pursuit in the future, the licensee may constitute trademark infringement and face compensation.

2. The licensee shall use the trademark in accordance with the licensed trademark sample and shall not exceed the scope of the license.

After obtaining the trademark license, some licensees use the authorized trademark without authorization. The standard sample is redesigned and put into use, which may also exceed the scope of the license. For example, the graphic design of a word trademark makes the new trademark too different from the licensed trademark and constitutes a new similarity with the graphic trademark previously registered by a third party, thus causing confusion and misunderstanding in the consumer market. Such new design use Such behavior will bring the risk of trademark infringement to the licensee itself.

This approach by the licensee may also bring market losses to the licensor. The brand image vividly represents the image and character of the trademark owner. The licensee's new design may be contrary to the trademark owner's style, convey wrong information to consumers, and affect the market performance of the trademark owner's brand.

In addition, the registered trademark of the trademark owner may be filed by others to cancel the application for non-use for three years. In this case, the trademark owner shall submit the application within 2 months from the date of receipt of the notice in accordance with the law. Evidence of use, if evidence of use is not submitted, the trademark will be revoked. For evidence of use, the trademark being used should be clearly stated.

If the trademark owner licenses the trademark, but the licensee does not use it in accordance with the licensed trademark sample, and the trademark sample has been significantly changed, in the future, if the three-year non-use procedure is revoked, it is easy to happen. The evidence of trademark use provided by the licensee does not meet the requirements. At this time, if the trademark owner does not use the trademark, there is a legal risk of the trademark being revoked.

Therefore, when both parties sign a license contract, they must clearly agree that the licensee shall not arbitrarily change the licensed trademark sample for use, and the trademark owner shall regularly review the licensee’s use of the trademark. In order to detect problems in time.

3. The licensed trademark should be legal and valid

On the one hand, the licensed trademark should be an approved registered trademark, and the scope of goods approved for registration should be greater than or equal to Scope of licensed goods. When accepting a license, the licensee should promptly conduct legal investigations to find out whether the licensed trademark sample and product content are those approved and registered by the Trademark Office, so as to ensure that the trademark should be legally registered. trademark. Otherwise, there will be the following risks:

Trademark infringement. The content of the licensed goods exceeds the scope of goods approved for trademark registration. If the licensee has weak legal awareness and blindly uses the goods in accordance with the license contract, if someone else happens to have registered it before, it will constitute trademark infringement.

Deceptive licensing. Trademark licensing generally requires payment of licensing fees. The licensee does not check the legal status of the licensed trademark on his own. If the trademark owner is subjectively deceived and licenses an unregistered or unregistered trademark to the licensee, the licensee will There will be a loss of trademark licensing fees.

On the other hand, the licensed trademark should be valid. When accepting a license, the licensee should also promptly find out whether the licensed trademark has been renewed, whether the trademark rights are held by the trademark licensor, and whether the trademark licensor has the right to dispose of the trademark rights. In reality, it is often seen that regardless of whether the licensee is subjectively deceiving, the licensed trademark is not renewed in time or the license period is longer than the exclusive period of the trademark, causing the licensee to obtain an invalid registered trademark, thus resulting in Legal risks of infringement will also result in loss of trademark license fees.

In summary, for trademark licensing, both parties to the license should pay attention to the design of the contract terms when signing the contract to avoid the above problems. Trademark License