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Trademark License Agreement

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Trademark License Agreement Powered By Docstoc
					A trademark license is an agreement between a trademark owner (licensor) and another
person or business entity (licensee) in which the licensor gives permission to the
licensee to use its trademark or trademarks for an agreed purpose. A trademark license
agreement sets forth the parties names, identification of the trademark or trademarks
that are the subject of the agreement, the specific trademark right or rights to be
licensed, including the geographic territory in which the trademarks are being licensed,
the authorized purposes, the licensing fee or royalty applicable, and the nature and
quality of the goods and/or services with which the licensee may use the trademark.
This long-form template agreement can be customized to fit the needs of the drafting
parties.
                        TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (hereinafter “Agreement”) is effective as of
__________ day of __________, _____ (hereinafter the “Effective Date”) by and between:
________________, a corporation organized and existing under the laws of the State of
_______________, located at ___________________ [ADDRESS] (hereinafter “Licensor”), and
______________________, a corporation organized and existing under the laws of the State of
_________________, located at ___________________________ (hereinafter “Licensee”).

WHEREAS,
A.    Licensor is the legal owner of the right, title, interest and goodwill in the trade mark set out
in Schedule 1 (hereinafter the “Trade Mark”);
B.    Licensee desires to use the Trade Mark upon or in relation to the manufacture, production,
and sale of Products, as set forth in Schedule 2 (hereinafter “Products”);
C.    In consideration of the payments set out in this Agreement, Licensor has authorized
Licensee to use the Trade Mark on the terms and conditions contained herein (hereinafter
“License”).
NOW, THEREFORE, in consideration of the foregoing and of the mutual promises hereinafter
set forth, the parties agree as follows:

1.       Appointment of Licensee
1.1.    Subject to the terms of this Agreement, Licensor grants to Licensee for the Term a non-
exclusive, non-assignable License to use the Trade Mark in the Territory as set forth in Schedule
3 upon or in relation to the Products.
1.2. If Licensee wishes to amend the list of Products, it will submit to Licensor for
consideration a revised Schedule 2 item, and Licensor will advise Licensee whether it gives its
consent to the amendment. Licensor’s consent will not be unreasonably withheld.
1.3. Licensor retains the right to sell its own product online or to other retailers without any
conflicts with another mass retailer. Licensee agrees that such as an initiative shall not hinder
Licensee’s revenues.
1.4. As a condition to this Agreement, Licensee must use and display Licensor logo
(hereinafter “Logo”) as a part of their design in each piece or unit or Product produced during the
terms of this Agreement.

2.       Term
The term of this Agreement is commences of the Effective Date and shall continue with full
effect for __________ [AMOUNT IN WORDS] (___ [AMOUNT IN NUMERALS]) years. If
either party wishes to extend the term, such a party must notify the other in writing 30 (thirty)
days in prior to termination of this Agreement.

3.       Royalty Payments

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3.1.    In consideration of the License, Licensee must pay Licensor __________ [AMOUNT IN
WORDS] percent (__ %) [AMOUNT IN NUMERALS] as Royalty on the retail price for all
Products of Licensee used with Licensor Trademark and logo in accordance with payment terms
specified below. Retail prices of the Product, for the time being, are set forth in Schedule 3
attached hereto. Licensee must notify within 1 (one) day after any changes of retail prices and
such a change must be recorded in an amendment of Schedule 3.

(Royalty payments may be charged over Gross sales or Net sales)
3.2. Licensee agrees to pay to Licensor Royalty payments for a particular month directly to
Licensor’s bank account on or before the tenth (10th) day of the subsequent month along with full
sales report on gross sales less returns.
(Add other terms of payment if applicable or for varying terms of payment add a schedule)

4.       Audit of Stock or Revenue
4.1     Licensee shall provide Licensor with a written statement of Licensee’s stock and Net
Sales during such quarterly period showing the number, type, and retail price of each Product
and a calculation of the royalty due based thereon. Within sixty (60) days after any expiration or
termination of this Agreement, Licensee shall provide Licensor such a statement for the last
whole or partial quarterly period during the Term. Each such statement shall be accompanied by
the remittance to Licensor of the royalties shown to be due thereby.
4.2    Upon five (5) days notice to Licensee, Licensor, at its own expense, shall have the right at
any time during regular business hours, not more frequently than twice annually, to have a
qualified accountant selected by Licensor audit the records of Licensee to the extent necessary to
verify Licensee’s statements and payments of royalties. Such records shall be made available to
Licensor’s accountant at Licensee’s office located at the address stated above. Licensee shall
cooperate with and assist Licensor’s accountant for the purpose of facilitating such audit.
4.3. Licensor shall bear all costs of any audit, unless the audit demonstrates that there has
been an underpayment. Should there be any underpayment of more than __________
[AMOUNT IN WORDS] percent (__ %) [AMOUNT IN NUMERALS], Licensee agrees to
promptly pay for any underpayment of royalties and will also incur the cost of such an audit.
4.4. Underpayment, non-payment, or material misrepresentations in royalty reports (or failure
to submit same) may result in termination of the License.

5.       Independent Contractor

The parties acknowledge this Agreement does not render Licensee as an employee, partner, or
agent of Licensor and Licensee shall have no authority to act for or to bind Licensor in any
manner whatsoever other than as expressly contemplated by this Agreement. Both parties agree
that that Licensee is:

5.1. not entitled to payment of salary, holiday pay, sick pay, severance pay, long service
leave, or any other entitlement which an employee has in respect of his or her employer;


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5.2. solely responsible for all payments in relation to any taxes such as, but not limited to,
income tax, pay-roll tax, sales tax, or any other payments as applicable imposed on an employer
in respect of employees;
5.3. solely responsible for providing superannuation, sickness benefits, and work cover in
respect of its employees;
5.4. solely responsible for ensuring compliance with all relevant federal, state, and local laws
with respect to its provision of their services.

6.       Graphics/ Artwork & Ownership
Both parties agree that Licensee shall be the ultimate owner of all their original designs.
Licensor retains ownership of all images or graphics created by Licensor which are being used
by Licensee on any of their Licensor range. Licensee must not replace any artwork created for
Licensor on any other brand.

7.       Quality Control of Products
7.1. Licensee must not use the Trade Mark either by itself or as part of any other identification
or name in relation to any products or services other than the Products discussed in this
Agreement.
7.2     Licensee agrees that the nature and quality of: (1) all services and goods rendered by
Licensee in connection with the Trade Mark; (2) all goods produced, distributed or sold by
Licensee under the Trade Mark; and (3) all related advertising, promotional, and other related
uses of the Trade Mark by Licensee shall conform to standards set by, and be under the control
of Licensor. All such uses shall require prior written consent by Licensor. Any different usage
also shall require prior written consent by Licensor.
7.3     Licensee must permit any officer or agent of Licensor, who is authorized in writing for
that purpose, to enter upon any premises of Licensee during normal business hours (on 24 hours
verbal or written notice), in order to inspect the circumstances of manufacture, production,
provision, or supply of the Products and the use or application of the Trade Mark. The officer or
agent is entitled to take samples and to carry out tests for the purpose of examination and testing
for compliance with the terms and conditions of this Agreement.
7.4    Licensee shall comply with all applicable laws and regulations and obtain all appropriate
governmental approvals pertaining to the production, distribution, sale, and advertising of
Products.

8.       The Trade Mark
8.1    Licensee shall include the Trade Mark on or with all Products sold under the Trade Mark
and shall include all notices and legends with respect to the Trade Mark as are or may be
required by applicable federal, state, and local laws or which may be reasonably requested by
Licensor.
8.2    Licensee acknowledges the ownership of the Trade Mark by Licensor, agrees that it will
do nothing inconsistent with such ownership, and that all use of the Trade Mark by Licensee and

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all good will developed therefrom shall inure to the benefit of and be on behalf of Licensor.
Licensee agrees that nothing in this Agreement shall give Licensee any right, title, or interest in
the Trade Mark other than the right to use the Trade Mark in accordance with this Agreement
and Licensee agrees that it will not attack the title of Licensor to the Trade Mark or attack the
validity of this Agreement.

9.        Projection of Sales.
Licensee hereby agrees to provide Licensor with sales projection for each month.

10.      Logo Changes
In the event Licensee desires to alter Licensor Logo, Licensee must notify in writing to Licensor
and Licensor shall have the final approval on any such changes. The ultimate owner of such new
logos after any amendments shall be Licensor.

11.      Confidentiality
All information including but not limited to, Licensor’s sales literature, affirmations, terms of
this Agreement, business, and strategic information about Licensor, financial information and all
correspondences between Licensee and Licensor are considered as ‘Confidential Information’ for
the purpose of this Agreement. Licensee must not disclose this information to any third party not
related to this Agreement, and agrees not disclose, divulge or use such Confidential Information
for any other purpose other than the purposes mentioned in this Agreement. Such Confidential
Information must be released only to those employees or personnel of Licensee who are
responsible for the performance of this Agreement on a ‘need to know’ basis.

12.      Execution
The parties agree to execute all documents and do all acts and things required to give effect to
this Agreement.

13.      No agency
Licensee must not:
a)     in any manner describe itself or hold itself out as the agent of Licensor and Licensor
cannot be or become liable whatsoever in respect of the manufacture, production, provision, or
supply of the Products entered into by Licensee with any other party;
b)     grant any right, license, or authority to any third party whether at common law or
otherwise to use the Trade Mark; or
c)     use the Trade Mark or use Licensor’s name without submitting to Licensor a copy of the
proposed marked Products for its prior written consent.

14.      Similar Trade Mark
Licensee shall not use in its business any other trademark or logo which is similar to or
substantially similar to or so nearly resembles the Trade Mark as to be likely to cause deception
or confusion among the public.

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15.      Maintenance of value
Licensee must use its best endeavors to preserve the value of the Trade Mark and in particular
must:
a)    endeavor to create, promote, and retain the goodwill in its business relating to the
manufacture, production, provision or supply of the Products;
b)       use the Trade Mark in the manner appearing in Schedule 4;
c)     not use the Trade Mark accompanied by words describing the Products unless the Trade
Mark is distinguished from the descriptive surrounding and adjacent text.

16.      Infringement
16.1 Licensee shall notify Licensor promptly of any actual or threatened infringements,
imitations, or unauthorized use of the Trade Mark by third parties of which Licensee becomes
aware. Licensor shall have the sole right, at its expense, to bring any action on account of any
such infringements, imitations, or unauthorized use, and Licensee shall cooperate with Licensor,
as Licensor may reasonably request, in connection with any such action brought by Licensor in
accordance with the Clause 17 below. Licensor shall retain any and all damages, settlement
and/or compensation paid in connection with any such action brought by Licensor.

17.      Infringement proceedings
17.1. Licensee covenants to Licensor that it will do all things reasonably necessary for the
protection of the Trade Mark against deregistration or infringement.
17.2. In the event that:
a)    Licensee receives notice of any infringement or threatened infringement of the Trade
Mark or any common law passing off by reason of imitations of get up or otherwise; or
b)     any third party alleges or claims that the Trade Mark is liable to cause deception or
confusion to the public, Licensee must notify Licensor immediately giving particulars, and
provide all information and assistance to Licensor in the event that Licensor commences or
defends proceedings in relation to the above claims or infringements. Any such proceedings will
be under the control and at the expense of Licensor.
17.3 In the event that Licensor does not commence or defend proceedings in relation to claims
or infringements of the Trade Mark within two (2) months of receiving notification of them from
Licensee, Licensee may institute proceedings in its own name as if it were Licensor (joining
Licensor as a plaintiff) and Licensor is not liable for any cost unless it takes part in the
proceedings.

18.      Indemnity
Licensee, at its expense, shall defend and indemnify, to the fullest extent allowed by law, and
save and hold Licensor harmless from and against any and all liabilities, claims, causes of action,
suits, damages, including without limitation, suits for personal injury or death of third parties,

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and expenses, including reasonable attorneys’ fees and expenses, for which Licensor becomes
liable, or may incur or be compelled to pay by reason of Licensee’s activities or breach of the
terms of this Agreement, including but not limited to: (i) claims of infringement of any
intellectual property right; or (ii) product liability suits by direct or indirect customers of
Licensee.

19.      Termination
19.1. Without prejudice to any right or remedy which Licensor may have against Licensee for
breach of this Agreement, Licensor has the right to terminate or suspend the License and this
Agreement at any time without notice to Licensee:
a)       if an insolvency event occurs where:
i.     Licensee ceases to (or is unable to) pay its creditors (or any class of them) in the ordinary
course of business, or announces its intention to do so;
ii.    a receiver, receiver and manager, administrator, liquidator, or similar officer is appointed
to Licensee or any of its assets;
iii.  Licensee enters into, or resolves to, enter into, a scheme or arrangement, compromise or
composition with any class of creditors;
iv.     a resolution is passed or an application to a court is taken for the winding up, dissolution,
official management, or administration of Licensee;
v.     if any liquidator, receiver or manager enters into possession of any of the assets of
Licensee;
vi.   anything having a substantially similar effect to any of the events specified above
happens under the law of any applicable jurisdiction.
b)      If Licensee has breached any material provision of this Agreement, and have failed to
cure the breach within 15 (fifteen) days after being sent a written notice by Licensor.
c)      Either party may terminate this Agreement for convenience by giving the other party a
written notice 30 (thirty) days in advance.
19.2. In the event of early termination permitted by this Agreement, Licensee shall NOT be
entitled to a refund of any fees or pro-rata portion thereof paid by Licensee for any remaining
period of the Agreement from the date of termination.
19.3. Upon the termination or non-renewal of this Agreement, Licensee shall cease use of the
Trade Mark, shall destroy all electronic copies of the Trade Mark, catalogues, affirmations, and
Confidential Information in relation to Licensor in the possession of Licensee, and shall return to
Licensor any and all paper copies of the Trade Mark in the possession of Licensee.
19.4. Both parties agree that termination or non-renewal shall not relieve Licensee from its
liability to pay any amounts which have accrued to Licensor on or before the date of termination
or non-renewal.

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20.      Disclaimer; Limitations on Warranties
Notwithstanding anything else in this Agreement:
20.1. Neither party shall be liable for any indirect, special, incidental, punitive, or
consequential damages, including but not limited to loss of data, business interruption, or loss of
profits, arising out of the use of or the inability to use the Trade Mark. The entire liability of
Licensee shall be limited to the amount actually paid by Licensee for the License.
20.2. Licensor makes no representation or warranty, and expressly disclaims any liability with
respect to the content of any Trade Mark, including but not limited to errors or omissions
contained therein, libel, infringement of rights of publicity, privacy, trademark rights, moral
rights, or the disclosure of confidential information.
20.3. Except for the express warranties stated herein, the Licensed Materials are provided on an
“as is” basis, and Licensor disclaims any and all other warranties, conditions, or representations
(express, implied, oral or written), relating to the Trade Mark or any part thereof, including,
without limitation, any and all implied warranties of quality, performance, merchantability, or
fitness for a particular purpose. Licensor makes no warranties respecting any harm that may be
caused by the transmission of a computer virus, worm, time bomb, logic bomb, or other such
computer program. Licensor further expressly disclaims any warranty or representation to
authorized users, or to any third party.
20.4. Licensor does not guarantee that the information in the Trade Mark is error-free or
warrants that the Trade Mark will meet Licensee’s requirements.
20.5. The entire risk as to the results and performance of the Trade Mark is assumed by
Licensee.

21.      Notices
All notices under this Agreement shall be in writing and shall be deemed given:
a)       when personally delivered; or
b)       when sent by confirmed fax; or
c)       when sent by confirmed e-mail; or
d)       when sent by pre-paid first class post to the address of the party set out in this Agreement
or (if any) such address as such party last provided to the other by written notice.

22.      Arbitration

All disputes arising from the terms of this Agreement may be subjected to binding arbitration
upon consent of both parties, with one arbitrator selected by each party, and a third arbitrator
selected by the two chosen arbitrators. This Agreement shall be governed by and construed in
accordance with, the laws of the State of ___________ without regard to the conflicts of laws
rules thereof and any arbitration shall be brought in ________________ [COUNTY].

23.      Force Majeure

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Neither party shall be liable in damages or have the right to terminate this Agreement for any
delay or default in performing hereunder if such delay or default is caused by conditions beyond
its control including, but not limited to Acts of God, government restrictions (including the
denial or cancellation of any export or other necessary license), wars, insurrections, and/or any
other cause beyond the reasonable control of the party whose performance is affected.

24.       Entire Agreement

This Agreement and the Schedules constitute the entire integrated agreement of the parties and
supersedes all prior communications, understandings, and agreements relating to the subject
matter hereof, whether oral or written.

25.       Amendment

No modification or claimed waiver of any provision of this Agreement shall be valid except by
written amendment signed by authorized representatives of Licensor and Licensee.

26.       Severability

If any provision or provisions of this Agreement shall be held to be invalid, illegal,
unenforceable or in conflict with the laws of the United States or internationally, the validity,
legality, and enforceability of the remaining provisions shall not in any way be affected or
impaired thereby.

27.       Waiver of Contractual Right

Waiver of any provision herein shall not be deemed a waiver of any other provision herein, nor
shall waiver of any breach of this Agreement be construed as a continuing waiver of other
breaches of the same or other provisions of this Agreement.

28.       Electronic Signature

(a)      Counterparts
This Agreement may be executed in one or more counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same instrument. To expedite the
process of entering into this Agreement, the parties agree that signed transmitted copies shall be
deemed equivalent to original documents until such time as original documents are executed and
delivered.
(b)      Notice
All notices under this Agreement shall be in writing and shall be deemed given:
i.       when personally delivered; or
ii.      when sent by confirmed fax; or
iii.     when sent by confirmed e-mail; or

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iv.      when sent by pre-paid first class post to the address of the party set out in this Agreement
or (if any) such address as such party last provided to the other by written notice.

29.         Injunctive Relief.

Each party acknowledges that a breach or threatened breach by it or any sublicensee or Affiliate
of this Agreement will result in immediate and irremediable damage to the other party and that
money damages alone would be inadequate to compensate such other party. Therefore, in the
event of a breach or threatened breach of this Agreement by either of the parties (or any
sublicensee or affiliate), the other party may, in addition to other remedies, immediately obtain
and enforce injunctive relief prohibiting the breach or threatened breach or compelling specific
performance.

30.         Construction.

The parties have participated jointly in the negotiation and drafting of this Agreement. In the
event an ambiguity or question of intent or interpretation arises, this Agreement shall be
construed as if drafted jointly by the parties and no presumption or burden of proof shall arise
favoring or disfavoring any party by virtue of the authorship of any of the provisions of this
Agreement.

31.        Binding Effect.

This Agreement and all of the provisions hereof shall be binding upon and inure to the benefit of
the parties and their respective successors, legal representatives, and permitted assigns.

32.        Survival.

Clauses 11, 18, 19.4, and 20 shall survive any termination of this Agreement.


(SIGNATURE PAGE FOLLOWS)




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IN WITNESS WHEREOF, the parties have executed this Agreement by their respective, duly
authorized representatives as of the date first above written.


By Licensor:
Signed for and on behalf of Licensor in the presence of:
)
)
) ________________________
Signature of _______________________________________


Witness
_________________________
Name


By Licensee:
____________________________ _____________________________
Name (please print) Name (please print)
Signed by in the presence of:
)
) _________________________
Signature of
_________________________
Signature of witness
_________________________
Full name of witness




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                                                     SCHEDULE 1
                                TRADEMARK REGISTRATION DETAILS




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                                                     SCHEDULE 2
                                                      PRODUCTS




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                                                     SCHEDULE 3
                                                   RETAIL PRICES




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                                                     SCHEDULE 4
                                              USE OF TRADEMARK
Trade Mark must appear in full in all material, promotions, packaging and information
whatsoever relating to the Products. The Trade Mark can be applied in any color that fits the
design, and it may be altered in size to suit packaging or other marketing requirements. However,
the Trade Mark must not be altered in terms of graphic proportions relating to the design.




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DOCUMENT INFO
Description: A trademark license is an agreement between a trademark owner (licensor) and another person or business entity (licensee) in which the licensor gives permission to the licensee to use its trademark or trademarks for an agreed purpose. A trademark license agreement sets forth the parties names, identification of the trademark or trademarks that are the subject of the agreement, the specific trademark right or rights to be licensed, including the geographic territory in which the trademarks are being licensed, the authorized purposes, the licensing fee or royalty applicable, and the nature and quality of the goods and/or services with which the licensee may use the trademark. This long-form template agreement can be customized to fit the needs of the drafting parties.
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