A trademark’s degree of registrability or its ability to sustain a suit or enforce a…
Trademark is a type of intellectual property consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. Trademarks licensing is an agreement through which the Trademark owner permits the licensee to use the trademark for commercial purposes. This article deals with the Trademark Licensing agreement and related laws in Singapore.
Trademark licensing is an agreement between the proprietor of the trademark, i.e. the licensor, and the licensee in which the licensor permits the trademark to be used for commercial purposes by the licensee. As the owner of the trademark, the licensor has the exclusive rights to use the trademark according to his choice and can authorize any third party (licensee) to use the mark in Singapore by granting a license for the trademark. This agreement of trademark licensing holds important not only for maintaining trademark registration but also to make sure that the mark is being used properly, in a way maintaining the rights of the owner. The trademark licensing also plays an important role to expand the market, production, and distribution capacity of the mark as well. All of this in a way increase the business and brand value of the product.
A trademark license should be registered with the trademark office in Singapore. Singaporeans are expected to have a licensing record for notification purposes in order to be aware of the presence of a license agreement. If a license has been registered with the Registrar, each person is considered to have received a notice from the Registrar to ensure that the inability to register a trademark license does not lead to the license being invalidated.[image source: Shutterstock]
The agreement of the trade mark license comprises:
- Details of licensor and licensee
- Details of the registered trademark is licensed
- License reach and conditions of use, which can contain territorial limits
- Quality requirements, and quality management procedures, should be implemented
- Financial duration of the license of a trademark
- Exclusivity for Trademark License
The licensor is responsible for supervising the quality of the products used in the registered trademark with regard to the licensee. The licensee shall ensure that the content of such products is used in accordance with the registered trademark on the market.
Types and Scope of licensing
The extent of rights that is granted via a licensing agreement can be determined as followed:
A. Limitation of scope and/or geographical area
- Exclusive or non-exclusive license: The owner of a trademark has the right to choose between an exclusive or non-exclusive license. In case of an exclusive license, the trademark owner appoints a licensee for every country and only the said licensee will have the right to use the mark in that specific country. However, in a non-exclusive license, the trademark owner appoints multiple licensees for one country who can use the trademark in that country.
- Limiting the goods and/or services that can be used by the licensee in the country: The owner of trade mark has the right to choose between granting a license for entire goods/services as covered by the trademark registration or can grant a license for part of them. In the latter scenario, the trademark owner will have the right over remaining goods for which a license is not granted.
- Limiting the geographical area where the licensee can use the mark within the country.
The trademark owner has the right to decide whether to allow the licensee to further appoint a sub-licensee or not based on the terms of the agreement.
There is no specific duration prescribed for the duration of the agreement. The license can be granted even for an unlimited period but if the license is being granted for a specific time period then the end of date has to be mentioned in the agreement.
Registration of Trademark Licensing
Most of the countries require a trademark licensing agreement to be recorded with the trademark registry before the agreement is considered to be valid and can be enforced in most of the countries, however, this is not the case with Singapore. In Singapore, the executed licensing agreement will not be invalidated if the parties choose not to register such an agreement with the Intellectual Property Office of Singapore but it is certainly recommended to record the transaction. The recordal serves as prima facie evidence of the license agreement as the details of the licensee and term of the license are included in the trademark records in the IPOS database for the public to see.
The Trademark (Amendment) Act, 2007 relates to pending trademarks for recordal of licenses who wants them. Before the 2007 Amendment, most licenses may only be registered with the registrar for the registration of a trademark. In 2007, Singapore trademark laws were amended to affirm the obligations of the Singapore Treaty on Law of Trademarks that was administered by WIPO (World Intellectual Property Office). As a part of the Trade Marks (Amendment) Act 2007, the Act also allows for the registration of licenses related to trademarks pending.
The licensing of trademarks leads to the often-delicate equilibrium of interests that must be preserved between trademark owners, consumers, and the content community at large. Trademark licensing is an important method for the controlled use of trade marks. This benefits both the licensor and the licensee in the advancement of their respective firms. In addition, when the licensee is expected to retain a certain degree of control over the specification and the quality of the products and services it provides or delivers under the mark, the production of the brand name benefits.