Suppose you own a registered trademark in Singapore and are planning to authorize another party to use the mark in the country on your behalf. In that case, it is important to have a written trademark license agreement in place, to secure the rights and interests of both parties.
A trademark license agreement is a contract between a licensor (the registered trademark owner) and a licensee, whereby the licensor grants the right to use the registered trademark to the licensee. The right to use herein can be the right to produce/manufacture the products under the registered trademark and/or the right to distribute/sell the products or services under the licensed trademark.
A trademark license agreement can be prepared as a separate agreement or as part of a general business contract between the parties.
What do we need to be able to record a license in Singapore?
1. The trademark details
The correct registration details of the licensed trademark which should still be valid.
2. The extent of rights granted in the agreement
a. Type of license granted (exclusive or non-exclusive license)
Trademark owners have the option of granting an exclusive or non-exclusive license for their trademarks. For an exclusive license, the trademark owner will appoint one licensee in each country, and only the said licensee will have the right to use the mark in the specific country.
On the other hand, when granting a non-exclusive license, the trademark owner will be able to appoint multiple licensees in a single jurisdiction or use the trademark in that country along with the licensee.
b. Sub-license
The licensee can appoint a sub-licensee to use the trademark within the geographical area covered by the license agreement.
3. Duration, termination and renewal of the license
A license can be granted for an unlimited period of time or it can be limited to a certain period or end on a specific date as agreed by the parties. It is important to know the commencement date and end date (if applicable).
All the above details, among others, should be included in the trademark license agreement so that the necessary forms for the recordal can be completed on our side and submitted with the trademark registry.
At IPHub Asia, we specialise in trademark and design protection in Asia, with a strong focus on Southeast Asia. If you have any questions about trademarks, please get in touch. You can also visit our website to learn more about our services.
