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[Date]
[without prejudice to the Licensor's obligations under Clause 8.1] OR [and the Licensor's obligation to indemnify the Licensee under Clause 8.1 shall not apply unless the Licensee complies with the requirements of this Clause 8.2].
providing that, if the stated time of deemed receipt is not within Business Hours, then the time of deemed receipt shall be when Business Hours next begin after the stated time.
The parties have indicated their acceptance of this Licence by executing it below. SIGNED BY [[individual name] on [...............], the Licensor] OR [[individual name] on [...............], duly authorised for and on behalf of the Licensor]: ........................................ SIGNED BY [[individual name] on [...............], the Licensee] OR [[individual name] on [...............], duly authorised for and on behalf of the Licensee]: ........................................
Using this document, a trade mark owner may licence rights in trade marks to another person. The trade mark rights may be registered or unregistered or both. The rights granted will vary from licence to licence. The document is relatively flexible, and may be edited to the advantage of either party. The trade mark licence assumes that the rights in question arise under English law. In English law, licences of registered trade marks must be written down and signed by the licensor, or by a person acting on behalf of the licensor. Some licences should be registered with the relevant authorities; in the case of UK registered trade marks, that means the UK Intellectual Property Office.
Subsection 1
Subsection 2
Do you wish to include in the document a description of the background to the document?
Subsection 1
Subsection 2
Subsection 3
Clause 1: Definitions
Clause 1.1Definition of Business Day
Definition of Business Hours
Definition of Effective Date
Definition of Licensor Trade Marks
Definition of Minimum Term
Definition of Territory
Optional element
Most large companies, and many brand-conscious SMEs, create and maintain style guidelines to regulate the use of their trade marks both internally and under licence.
Clause 4.4Optional element. Will the Licensee be required to use the (R) symbol and/or the TM symbol?
Optional element.
Clause 4.7Optional element. Will there be any exceptions to the general prohibition on use of the trade marks outside the designated territory?
Optional element.
Optional element. Will the Licensor have a general right to make reasonable demands in relation to the use of the trade marks?
Clause 4.10Optional element.
Optional element.
Clause 4.12Should the document include a provision specifying the consideration provided by the second party to the first party?
In English law, a contract must be supported by consideration, ie some kind of quid pro quo. The consideration may be nominal. This sort of provision may be required if it is unclear what benefit the first party is getting from the contract. An alternative approach in these circumstances is to execute the document as a deed.
Clause 5.1Section 30 of the Trade Marks Act 1994 sets out general provisions as to rights of licensees in case of infringement. It provides: "(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark. The provisions of this section do not apply where or to the extent that, by virtue of section 31(1) below (exclusive licensee having rights and remedies of assignee), the licensee has a right to bring proceedings in his own name. (2) A licensee is entitled, unless his licence, or any licence through which his interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests. (3) If the proprietor - (a) refuses to do so, or (b) fails to do so within two months after being called upon, the licensee may bring the proceedings in his own name as if he were the proprietor. (4) Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by a licensee alone. (5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees. (7) The provisions of this section apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 31(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark."
Section 31 of the Trade Marks Act 1994 concerns the grant to an exclusive licensee of the rights and remedies of an assignee. Section 31 provides: "(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. Where or to the extent that such provision is made, the licensee is entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name. (2) Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly. (3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark. (4) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone. (5) A person who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action - (a) the court shall in assessing damages take into account - (i) the terms of the licence, and (ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement; (b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and (c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them. The provisions of this subsection apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other. (7) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 16 (order for delivery up); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence. (8) The provisions of subsections (4) to (7) above have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor."
Should the document include indemnities?
Clause 8.1Optional element.
If this provision is included, losses suffered by the second party as a result of a breach of the contract by the first party will be assessed on an indemnity basis, rather than a standard basis.
Optional element.
Optional element.
Contractual limitations and exclusions of liability are regulated and controlled by law, and the courts may rule that particular limitations and exclusions of liability in contracts are unenforceable. The courts are particularly likely to intervene where a party is seeking to rely on a limitation or exclusion of liability in its standard terms and conditions, but will also sometimes intervene where a term has been individually negotiated. The courts may be more likely to rule that provisions excluding liability, as opposed to those merely limiting liability, are unenforceable. If there is a risk that any particular limitation or exclusion of liability will be found to be unenforceable by the courts, that provision should be drafted as an independent term, and be numbered separately from the other provisions. It may improve the chances of a limitation or exclusion of liability being found to be enforceable if the party seeking to rely upon it specifically drew it to the attention of the other party before the contract was entered into. Exclusions and limitations of liability in UK contracts are primarily regulated by the Unfair Contract Terms Act 1977 ("UCTA"). Contracts regulated by UCTA cannot exclude or restrict a party's liability for death or personal injury resulting from negligence (Section 2(1), UCTA). Except insofar as the relevant term satisfies the requirements of reasonableness, such contracts cannot exclude or restrict liability: (i) for negligence (which includes a breach of an express or implied contractual obligation to take reasonable care or exercise reasonable skill) (Section 2(2), UCTA); or (ii) for misrepresentation (Section 3, Misrepresentation Act 1967). In addition, if a contract is regulated by UCTA, and one of the parties is dealing on the other's written standard terms of business, then except insofar as the relevant contractual term satisfies the requirements of reasonableness the other party cannot: (i) exclude or restrict his liability in respect of a breach of contract; or (ii) claim to be entitled to render a contractual performance substantially different from that which was reasonably expected of him; or (iii) claim to be entitled, in respect of the whole or any part of his contractual obligation, to render no contractual performance at all (see Section 3, UCTA). UCTA includes various other restrictions, particularly in the case of contracts for the sale of goods and contracts under which possession or ownership of goods passes. If you wish to try to limit/exclude for liability in respect of reckless, deliberate, personal and/or repudiatory breaches of contract, you should specify this in relation to the relevant provision (for example, using the following wording: "The limitations and exclusions of liability in this Clause [number] will apply whether or not the liability in question arises out of any reckless, deliberate, personal and/or repudiatory conduct or breach of contract"). In many circumstances, however, the courts will find these types of limitations and exclusions to be unenforceable. Somewhat different rules apply to limitations of liability in contracts with consumers, and these provisions should not be used in relation to such contracts. These guidance notes provide a very incomplete and basic overview of a complex subject. Accordingly, you should take legal advice if you may wish to rely upon a limitation or exclusion of liability.
Clause 9.1Do not delete this provision (except upon legal advice). Without this provision, the specific limitations and exclusions of liability in the document are more likely to be unenforceable.
Clause 9.2Optional element.
Optional element.
"Consequential loss" has a special meaning in English law: it means any loss that, whilst not arising naturally from the breach, was specifically in the contemplation of the parties when the contract was made.
Optional element.
This provision is designed to exclude any rights a third party may have under the Contracts (Rights of Third Parties) Act 1999.
Optional element. Should liability for misrepresentation be excluded?
The questions of which law governs a document and where disputes relating to the document may be litigated are two distinct questions.
Clause 15.1This document has been drafted to comply with English law, and the governing law provision should not be changed without obtaining expert advice from a lawyer qualified in the appropriate jurisdiction. In some circumstances the courts will apply provisions of their local law, such as local competition law or consumer protection law, irrespective of a choice of law clause.
In some circumstances a jurisdiction clause may be overridden by the courts.
Optional element.
Clause 16.2Optional element.
Clause 16.3Optional element.
This provision is designed to exclude the application of a rule of interpretation known as the ejusdem generis rule. That rule may affect the interpretation of contractual clauses that list particular examples or instances of some more general idea, by limiting the scope of the general idea by reference to those particular examples or instances.