The more centralized the licensing process and the more the procedure is included, the better. Licensees who are regularly licensed should have a clearly written licensing directive. Accept who is licensed and who is not. The licensee must know where to go to renegotiate or clarify part of the license agreement. In the case of certain registered intellectual property rights, such as patents, trademarks and designs, parties to the licensing agreement should consider registering the licence with the Intellectual Property Rights Registry. In the case of a trademark, for example, until the application to register a licence under a registered trademark, the transaction is inoperative with respect to a person who unknowingly acquires an interest contrary to the trademark or under the mark. In this article, we examine some lessons learned from recent intellectual property licensing disputes. We draw attention to some of the issues that need to be taken into account when negotiating and developing a licensing agreement. “The courts agree to include certain obligations in good faith in a licensing agreement, for example. B: act honestly, cooperate, not arbitrarily exercise contractual power and do not act against a well-established acceptance of the industry. A trademark may be revoked if it has not been used in the past five years. Fortunately, the use by a licensee is usually the use of a trademark for these purposes.
However, be prepared to provide proof of use under the license. This problem recently appeared before a person appointed to the British Intellectual Property Office1. In this case, the patent holder submitted licensing agreements as proof of use. The appointee felt that this was insufficient. He explained that the licensee should have provided details of the license revenue. When the other party accepted the offer, there was a binding agreement. The court found that if the offering party wished to continue negotiations, it should have used the terms “contract-related” on its correspondence. Under the assignment of your assignment is a transfer of ownership of the intellectual property rights from the assignee to the assignee. Under licence, we believe that the licensee has authorized the use of intellectual property rights, with the licensee retaining the property.
A license can be issued in three ways. First, the licence could be exclusive, so that all others, including the licensee, could use the rights. Second, the licence could be an individual licence, the rights can be used by both the licensee and the licensee. Finally, the licence could be a non-exclusive licence, i.e. the licensee is free to grant the same rights to third parties. In one case last year, the High Court in good faith included certain obligations in a contract for the sale and licensing of toiletries.6 There was an obligation not to underestimate duty-free prices and, knowingly, not to provide false information. The case shows that the courts are prepared to include certain obligations in good faith in a licensing agreement, such as. B: act honestly, cooperate, not arbitrarily exercise contractual discretion and do not act against a well-established acceptance of the industry.
Umbro had problems a few years ago when he had two licensees for the same brand5. The problems stemmed from two things: (1) Umbro UK wrongly allowed one of its licensees to work in the field of the other licensee, in violation of the exclusive license; and (2) an unauthorized employee of Umbro`s U.S. subsidiary claimed that he had made changes to one of the licensee`s agreements. Had the exemptions been effective (which did not indicate that the worker did not have the power to bind Umbro UK), umbro UK would have been in violation of the other exclusive licence.