A trademark license is an agreement between a Multiple licenses can co-exist

trademark owner and a third person permitting at the same time as

her to use the trademark (specifying a scope and trademarks are intellectual
terms) goods

Industrial: Increase awareness, fame and popularity, decentralize

and differentiate offer, enlarge geographic market, characterize
Advantages for brand
licensor
Economic: Generate extra income, licensee pays royalties, spill-over
Why? effect

Industrial: increase spread of her products/services making them

more recognizable or appealing by exploiting distinctiveness
Advantages for licensee
(reputation) and selling power, share of know-how and business
risks

More industrial
Common trademarks
advantages
Brand Licensing Two types
More financial
Famous trademarks
advantages

No royalties, licensee does not pay (ask for

lump sum at the beginning and they receive
royalties)
For licensor
Loss of control, harm to reputation, increase of confusion,
blur uniqueness, tarnishment of value, consumers
dissapointment

If there's a non-compliance we need to evaluate if it was a breach of contract (damages -> ex: not
paying royalties), a trademark infringement (damages and repayment of lost fees -> more powerful),
or both

Minimum fee royalties, style guide, sample or final product, auditing,

Both can negotiate the terms If licensor does not do anything against licensee, she runs into the risk of loosing money
advertising and other costs of promotion, exclusivity, termination
of agreement to reduce the and reputation, and the risk of losing trademark for its new misleading use (quality
(renewal), infringement (litigation) -> Licensor has a bigger bargaining
Risks risks impairment)
power

Proprietor can invoke rights in regard to duration, form in

Very high licence costs, impossibility to recoup
which the trademark should be used, scope, territory, quality
investment (by lack of business or time), absence
For licensee of goods
of help from licensor, management of unsold
goods
National exhaustion: IP owner can oppose
importation based on the right of importation

Regional exhaustion (EU): first sale of IP

Parallel imports refer to cross-border sales of goods by independent
traders outside the manufacturer's distribution system without
consent
This can't be limited because of the exhaustion and first
sale doctrine -> still, licensor can sue for breach of
contract
protected product exhausts any IPR within the
Possible scopes of this doctrines
whole region

International exhaustion (US): the IPRs are exhausted once

the product has been sold by IP owner in any part of the
world