The owner of a trademark may, within the limits of the law, make use of it as he wishes. This includes granting third parties the right to use the trademark. This can be achieved through granting a trademark licence.
Granting such licences is provided for by law under § 30 of the German Trademark Act. The grant may be in regard to the rights over the whole product and service range covered by the trademark or over a part of those rights. The grant may also contain geographical restrictions.
The person granting the licence (licensor) should consider whether the grant entails exclusivity or not. If the recipient of the licence (licensee) is granted an exclusive licence he will have exclusive usage rights. The licensor will not be able to grant any further licences and in certain circumstances the licensor’s own rights may be restricted.
In the case of a simple trademark licence, the licensor retains usage rights and may grant further licences.
The scope and length of a trademark licence are regulated by a licensing agreement between the licensor and licensee. As the creation of a trademark licence agreement can have wide-ranging consequences for the owner of a trademark, it is advisable to seek legal advice when drafting the agreement.
Would you like to register a trademark? Do you have general questions about trademark law? We are here to help.
German lawyer Kilian Kost and the expert team at WILDE BEUGER SOLMECKE are available to answer your questions. Call us on +49 (0) 221 / 951 563 0.