License Agreement - M. Hamel-Smith & Co.
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License Agreement

Can I let other persons use my trade mark?

Other entities may use your trade mark through license agreements. A license agreement may be executed for a registered trade mark, or a trade mark application in respect of which an application for registration is pending, or an unregistered trade mark. The license agreement in respect of a registered trade mark may be registered on the Trade Marks Register as a registered user agreement.

What are the advantages of registering my license agreement as a registered user agreement?

The advantages of registering the license agreement as a registered user agreement are as follows:

  • Use by the licensee is deemed to be use by the proprietor of the mark and shall not be deemed to be use by a person other than the proprietor of the mark;
  • Notice is given to the public that the licensee is a mere licensee of the mark and not the proprietor of the mark. Notice is given to the public that the registered user has no rights to assign or transmit the mark or to grant sublicenses for the use of the mark; and
  • The execution of a formal agreement which is required for registration allows the proprietor to clearly define the scope of the licensee’s use of the trademark.

Are there any formal requirements to register the license agreement as a registered user agreement?

In order to register the license agreement, the proprietor of the mark and the licensee must apply jointly to register the trade mark license by completing the prescribed application form, paying the prescribed fee and filing the agreement at the Intellectual Property Office. The registered proprietor of the mark must also furnish a statutory declaration that provides the relevant particulars required by the Controller.

Is it possible to vary or cancel a registered user agreement?

Yes. The registered proprietor of a trade mark may apply to the Controller to vary the registered user entry. A registered user entry may also be cancelled at the request of the registered proprietor or registered user of the mark. Any third party may apply to cancel the registered user agreement on any of the following grounds:

  • The registered user has not used the trade mark in accordance with the terms of his permitted usage or the registered user has used the trade mark in such a way as to cause or to be likely to cause deception or confusion;
  • That the proprietor or the registered user misrepresented or failed to disclose some material fact in applying for the registration of the registered user agreement or that the circumstances have materially changed since the date of the registration;
  • That the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested.

The Controller may also cancel the registered user agreement in respect of any goods in relation to which the mark is no longer registered.

Does an assignment of a trade mark have to be registered at the Intellectual Property Office?

Yes. The new owner of a registered trade mark must register the transfer of title at the Intellectual Property Office.

What are the formal requirements to register the assignment of a trad mark?

The parties must execute an assignment document, complete the prescribed application form, file same at the Intellectual Property Office and pay the prescribed fees.

Must an assignment include goodwill?

An assignment may or may not include goodwill. If a trade mark is assigned without goodwill, the assignee must no later than six (6) months from the date on which the assignment was made or such extended period, apply to the Controller for directions with respect to the advertisement of the assignment and must advertise the assignment in such form and manner and within such period as the Controller may direct.

Are there any restrictions on assignment?

A trade mark will not be assignable if the assignment of the mark is likely to deceive or cause confusion as to the source of the goods or services. Associated marks must be assigned together, not separately.