Alejandro Alonso, a partner in the commercial law department, has published a new article in VPC Magazine on trademark licensing and what should be taken into account when formalising a contract between the owner of that trademark and the distributor who will use it to sell products.
As our commercial lawyer points out, ‘The trademark is an important asset for companies, especially in this sector,’ and therefore ‘can itself be marketed, either by selling it or by transferring its use to a third party.’
This is where the ‘trademark licence’ comes into play, whereby ‘the owner of the registered trademark grants a third party (“licensee”) the right to use it, for a specified period of time, in a specific geographical area, on an exclusive or non-exclusive basis, for the marketing of specific products or services’.
Our lawyer explains that the negotiation of the trademark licence agreement will depend on the weight of the trademark: ‘if the trademark is well known, the weight of the negotiation will probably fall on the owner, as they will be particularly demanding and will impose very specific obligations on the licensee. If, on the other hand, the trademark is still little known or is in the growth phase, the negotiation will undoubtedly be more balanced’.
What aspects should be taken into account when negotiating the distributor's use of the trademark? In his article, our expert details issues such as: ‘The exclusive nature of the licence; geographical scope; products or services and channels granted; duration; protection against passivity; competition; or sub-licences to third parties’.
If you would like further information, please do not hesitate to contact our office by calling 91.345.48.25 or sending an email to info@cecamagan.com
