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Trademark - Do you have to record a licensee?

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UKSBD

UKSBD

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    • Dec 30, 2005
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    If you are a trademark owner and allow someone else to use it, do you have to record them as a licensee?

    If not, what is the advantage of doing so?
     
    Hi UKSBD, formally creating a licensing agreement would allow you to agree clearly the terms of the licence - i.e., duration, modality of use, cost. The benefit is to formalise the agreement and potentially get a royalty from it.
    It costs £50 to record a licensee with the IPO (online application).

    Alternatively, you can enter into a co-existence agreement where you agree both to use the trademark.

    There's lots of interesting guidance on the IPO government website.

    Best of luck,
    Caroline
     
    Upvote 0
    What do you mean "allow"? Do you mean grant them a license or do you mean "not bother to take action"?

    If you grant a license it would make sense that record that in some way, otherwise you may be embarrassed when you later accuse them of infringement.
     
    Upvote 0
    obscure said:
    What do you mean "allow"? Do you mean grant them a license or do you mean "not bother to take action"?
    Click to expand...

    I mean, allow them to use the Trademark with permission

    ie.
    I have a Trademark registered to me but allow my business to use it under license.

    It's not a legal drawn up license but when 1st registering it (nearly 10 years ago) I just wrote something out giving my company the right to use the trademark for 10 years.

    As it is up for renewal soon I wonder if there is really any point in granting the company a licence again or just let them use it anyway, and if I do, is there any need to register it?
     
    Upvote 0
    UKSBD said:
    point in granting the company a licence again or just let them use it anyway, and if I do, is there any need to register it?
    Click to expand...
    If you own the company then there isn't much need for a formal license, unless you plan to sell the company.

    As for registering the Trademark - if you don't do that it becomes harder to protect.
     
    Upvote 0
    Upvote 0
    Recording the license safeguards the licensees right to bring infringement proceedings against third parties in certain circumstances - probably not particularly relevent in your case.
     
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