Efficient drafting and recording of trademark license
Q. Is recording of trademark license required?
A. It is not required but a licsense will not be effective against a third party of it is not registered.
Q. Who will be considered to be a third party?
A. It's tricky but it clear in the following examples: A sublicense may be deemed invalid if the master one has not been registered; or licensee may not take action against infringement even if the sublicense expressly permits it to do so.
Q. What documents are required for recording of a trademark license?
A. An original or certified copy of license agreement in duplicate; and a Power of Attorney from either of the parties.
Q. Are there formal requirements for a license agreement?
A. Yes, there must be full name and addresses of licensor and licensee, a license fee, type pf license (exclusive or non-exclusive), rights licensed, and territory.
Q. Can a license of a pending mark be recorded?
A. No, only registered ones.
Q. Is notarization, legalization is required for license agreement and Power of Attorney?
A. No, a signature and name of the person authorized by the parties will be sufficient?
Q. Can a copy of the required documents sent by email, fax be accepted by IP Office?
A. No, original documents or certified copy are required.
Q. Can a license agreement, Power of Attorney state only the name of the parties without their address?
A. No, IP Office will reject the documents.
Q. Can license and a sub-license be registered simultaneously ?
A. Yes, they can.
Q. How long does it take for Trademark Office to record a change?.
A. 3-4 months on average.
Q. When must the parties request IP Office to record a license?
A. It will be up to the parties to decide. However it is preferred the parties request IP Office to record as soon as possible after signing.
Q. How long registration of a trademark license be valid ?
A. It is up to the parties to decide but registration of a license will not be valid beyond the nearest expiration date of the licensed trademark, that means no license registration can be valid for more than 10 years. .
Q. Does it means a trademark license will have to be renewed ?
A. Yes, the licensor must renew the licensed mark registration before or at the same time of requesting IP Office to renew a trademark license agreement.