A Trademark Use Agreement is essential when a trademark owner wishes to permit another entity to use their registered trademark(s) while maintaining control over their intellectual property. This document, governed by Maltese law and compliant with EU regulations, is commonly used in commercial licensing, franchising, and brand expansion scenarios. It specifies the scope of permitted use, quality control requirements, financial terms, and enforcement mechanisms. The agreement is particularly relevant in Malta's growing commercial sector, where businesses frequently engage in cross-border transactions within the EU. It provides necessary legal protection for both the trademark owner and the user, ensuring compliance with Malta's Trademarks Act (Chapter 416) and related EU trademark directives. The document becomes crucial when expanding business operations, launching new products or services, or entering into strategic partnerships that involve trademark usage.
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1. Parties: Identification of the trademark owner (Licensor) and the party being granted use rights (Licensee), including full legal names and registered addresses
2. Background: Context of the agreement, description of the trademark(s), and brief explanation of the purpose of the agreement
3. Definitions: Definitions of key terms used throughout the agreement, including 'Licensed Marks', 'Territory', 'Licensed Products/Services', and 'Term'
4. Grant of License: Specific rights being granted, including type of license (exclusive/non-exclusive), territory, and permitted uses
5. Term and Termination: Duration of the agreement, renewal provisions, and circumstances allowing termination
6. Quality Control: Standards for trademark usage, approval processes, and quality maintenance requirements
7. Usage Guidelines: Specific requirements for how the trademark must be displayed, used, and attributed
8. Fees and Royalties: Financial terms, including license fees, royalties, payment terms, and reporting requirements
9. Representations and Warranties: Statements regarding trademark ownership, right to license, and other material facts
10. Protection and Enforcement: Obligations regarding trademark protection, infringement reporting, and enforcement actions
11. General Provisions: Standard contractual provisions including governing law, dispute resolution, and entire agreement
1. Sub-licensing Rights: Include when the Licensee is permitted to grant sub-licenses to third parties
2. Marketing and Promotion: Include when specific marketing requirements or restrictions need to be detailed
3. Territory-Specific Requirements: Include when the trademark will be used in multiple jurisdictions with varying requirements
4. Online Usage: Include when the trademark will be used in digital contexts, including social media and websites
5. Co-existence Provisions: Include when the trademark needs to co-exist with other marks or branding
6. Change of Control: Include when the agreement needs to address potential ownership changes of either party
7. Insurance Requirements: Include when specific insurance coverage is required for trademark usage
1. Schedule 1 - Licensed Marks: Detailed description and images of the licensed trademarks, including registration numbers
2. Schedule 2 - Licensed Products/Services: Comprehensive list of products or services for which the trademark may be used
3. Schedule 3 - Territory: Detailed description of geographical areas where use is permitted
4. Schedule 4 - Brand Guidelines: Technical specifications for trademark usage, including color codes, sizing, and positioning
5. Schedule 5 - Quality Control Procedures: Detailed procedures for quality control and approval processes
6. Schedule 6 - Fee Schedule: Detailed breakdown of all fees, royalties, and payment terms
7. Appendix A - Approval Request Form: Standard form for requesting approval for new uses of the trademark
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