Trademark Licensing Agreements in France – Content and Clauses

Trademark holders can choose to entrust the exploitation of their trademark to a third party. Such system can be necessary in several contexts :

  • Internal organization : a holding company holds the trademark and a second company is tasked with developing it commercially,
  • Franchising agreement : franchiser holds the trademark and franchisee uses it,
  • Externalized production : the trademark holder designs the products and owns it, while the third-party producer manufactures the products and resells it.

Licensing agreements can be advantageous for holders as it allows them to focus on macro strategy and leave the commercial development to another party.

Trademark licensing agreements detail the manner in which the trademark is used by the licensee, such as the extent of the conceded rights as well as the licensing fee.

It protects the trademark holder as the licensee understands the limit of its rights and the licensor has options to secure its IP investment.

Trademark agreements are preferably formalized in writing, for purposes of proof and third-party opposability.

Essentiels Terms of the Trademark Licensing Agreement

Trademark license agreements must be agreed to in writing, and recorded at the INPI (French Trademark) or EUIPO (European Union Trademark). This inscription costs 27 euros at INPI, 250 euros at EUIPO, and can be done online.

The trademark licensing agreement must include the following terms :

  • Scope of the conceded rights : details of the valid registered trademark, list of the rights conceded, partial or total license,
  • Licensing territory,
  • Duration of the license,
  • A provision to allow any contract holder to record it at the trademark office,
  • Trademark license fees : free or onerous, and its calculation (flat fee, fee based on the licensee’s revenue…).

Useful Terms of the License Agreement

The trademark license agreement can also include the following terms:

  • License exclusivity : will the licensor be able to grant other licenses ?
  • License termination conditions,
  • Sub-licensing right,
  • License payment conditions,
  • Know-how transfer,
  • Exclusive procurement conditions,
  • Infringement warranty,
  • Trademark defense role repartition,
  • Renewal conditions.

Our Fees to Draft a Licensing Agreement

Our law firm can draft your license agreement for a 750 euros pre-tax fee.

Contact us in order to provide us with all the necessary information to draft the contract. We will get back to you with 24 business hours, and will swiftly draft the contract.