Canadian Trademark Registration: Licensing Your Trademark

So that you wish to license your registered trademark? This is a quick overview of a few of the most essential issues when licensing a TM in Canada. Trademark licensing is a posh matter and that is in no way an exhaustive listing. Nonetheless, it does present a quick define of the necessities for trademark licensing below Part 50 of the Trademark’s Act Canada.Although the Trademark’s Act doesn’t require a written settlement between a licensor and licensee, it’s all the time advisable to place your settlement in writing. A Canadian TM lawyer skilled in TM licensing might help you draft a watertight licensing settlement – one which meets all the necessities of the Trademark’s Act Canada.It is very important make sure that the licensor is the precise proprietor of the registered TM in Canada. The CIPO trademark register lists the proprietor(s) of all Canadian trademark registrations, so it’s pretty simple to confirm possession previous to getting into right into a license settlement. Moreover, if you’re a sublicensee, it is best to guarantee your sublicense is permitted each by the licensee and likewise by the licensor. The fundamental precept is that the license have to be granted by the proprietor of the registered trademark in Canada.It is necessary if you end up the licensor to make sure that you set significant high quality requirements by which the licensee should strictly comply. You must also evaluate the licensee’s exercise to make sure that they’re in compliance with the phrases of your licensing settlement. If they don’t seem to be in compliance along with your written settlement, your trademark lawyer might advise you to terminate the settlement altogether. This may present that you’re sustaining direct management over the character, high quality and use of the registered trademark in accordance with the Trademark’s Act Canada.One other requirement is that the licensee should clearly determine to the general public that the TM is getting used below license. In doing so, they might want to additionally determine the proprietor of the mark. The rationale for that is that license agreements are seen by Canadian legislation as weakening TM registration (Canada solely). That is weakening of a trademark’s distinctiveness can generally consequence within the invalidation of the registered trademark. For that reason, Part 50 of the Trademark’s Act Canada requires that the proprietor retain management over their registered trademark to the extent that the general public is on discover. That is why you may typically see the next language related to a licensed registered trademark: “ACME is a registered trademark of the ACME Company used under license by Jane Licensor”