A Trademark Use Agreement is essential when a business wants to legally permit another party to use its registered trademark(s) in New Zealand. This document is particularly relevant when companies are entering into licensing arrangements, franchising relationships, or strategic partnerships that involve brand usage. The agreement must comply with New Zealand's Trade Marks Act 2002 and related commercial legislation, making it suitable for both domestic and international parties operating in New Zealand. It typically includes comprehensive details about permitted usage, quality control measures, territory restrictions, payment terms, and enforcement rights. This type of agreement is crucial for protecting the trademark owner's intellectual property rights while allowing controlled commercial exploitation of the brand.
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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 addresses
2. Background: Context of the agreement, including details of trademark ownership, registration numbers, and the business purpose for the trademark use
3. Definitions: Key terms used throughout the agreement, including 'Licensed Marks', 'Territory', 'Term', 'Licensed Products/Services', and 'Quality Standards'
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 for termination
6. Quality Control: Standards for trademark use, 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: Payment terms, including license fees, royalties, and payment schedules
9. Protection of Rights: Obligations regarding trademark protection, infringement reporting, and enforcement
10. Representations and Warranties: Standard warranties about trademark ownership, right to license, and non-infringement
11. General Provisions: Standard boilerplate clauses including governing law, dispute resolution, and entire agreement
1. Sub-licensing Rights: Include when licensee is permitted to grant sub-licenses to third parties
2. Marketing and Promotion: Include when specific marketing requirements or restrictions apply
3. Territory-Specific Requirements: Include when use spans multiple jurisdictions with different requirements
4. Online Usage: Include when trademark will be used in digital contexts, including social media and websites
5. Corporate Social Responsibility: Include when brand reputation requires specific ethical or sustainable practices
6. Assignment and Change of Control: Include when transfer rights are important or when dealing with large corporations
7. Audit Rights: Include when regular verification of usage and royalty calculations is required
1. Schedule 1 - Licensed Marks: Detailed list of all trademarks covered by the agreement, including registration numbers and classes
2. Schedule 2 - Approved Products/Services: Comprehensive list of products or services for which the trademark may be used
3. Schedule 3 - Brand Guidelines: Detailed specifications for trademark usage, including size, color, positioning requirements
4. Schedule 4 - Quality Standards: Specific quality control requirements and processes
5. Schedule 5 - Fee Schedule: Detailed breakdown of all fees, royalties, and payment terms
6. Appendix A - Approval Process: Step-by-step process for obtaining approval for new uses of the trademark
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