Trademark Sublicense Agreement for South Africa

Trademark Sublicense Agreement Template for South Africa

A Trademark Sublicense Agreement under South African law is a legal instrument that enables a master licensee (sublicensor) to grant rights to a third party (sublicensee) to use specific trademarks that the sublicensor has been licensed to use by the original trademark owner. The agreement must comply with the South African Trade Marks Act 194 of 1993 and related legislation, incorporating necessary quality control provisions, territorial restrictions, and enforcement mechanisms. This document establishes the terms and conditions for trademark usage, including royalty payments, quality standards, and compliance with South African intellectual property laws.

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What is a Trademark Sublicense Agreement?

The Trademark Sublicense Agreement is essential in commercial arrangements where a master licensee wishes to extend trademark usage rights to third parties while maintaining control over the trademark's reputation and use. This document is commonly used in franchise systems, international brand expansions, and multi-tiered distribution networks operating in South Africa. The agreement must carefully balance the interests of all parties while ensuring compliance with South African trademark law, competition law, and common law principles. Key considerations include the scope of rights granted, quality control measures, territorial restrictions, and royalty structures. The document typically requires approval from the master licensor and must align with the terms of the master license agreement while incorporating specific provisions required under South African law.

What sections should be included in a Trademark Sublicense Agreement?

1. Parties: Identification of the sublicensor (who holds the master license) and sublicensee, including full legal names and registered addresses

2. Background: Context of the agreement, including reference to the master license agreement and confirmation of sublicensor's authority to grant sublicense

3. Definitions: Definitions of key terms used throughout the agreement, including 'Licensed Marks', 'Territory', 'Licensed Products', and 'Term'

4. Grant of License: Specific rights being granted, including scope, territory, and any restrictions on use of the trademark

5. Term and Renewal: Duration of the agreement and conditions for renewal

6. Quality Control: Requirements for maintaining quality standards, approval processes, and inspection rights

7. Royalties and Payments: Financial terms including royalty rates, payment schedules, and reporting requirements

8. Protection of the Licensed Marks: Obligations regarding trademark protection, infringement reporting, and enforcement

9. Representations and Warranties: Standard warranties about authority to enter agreement and trademark ownership

10. Use of the Licensed Marks: Specific guidelines and restrictions on how the trademark may be used

11. Record Keeping and Audit Rights: Requirements for maintaining records and rights of audit by sublicensor

12. Termination: Circumstances allowing termination and consequences of termination

13. Post-Termination Obligations: Obligations of parties after agreement ends, including cease of use and return of materials

14. General Provisions: Standard boilerplate clauses including notices, assignment, entire agreement, and governing law

What sections are optional to include in a Trademark Sublicense Agreement?

1. Minimum Sales Requirements: Used when sublicensor wants to ensure minimum performance levels, including specific sales targets and consequences for failing to meet them

2. Marketing and Promotion: Include when specific marketing requirements or restrictions need to be imposed on the sublicensee

3. Sublicensing Rights: Include if sublicensee is permitted to grant further sublicenses

4. Insurance Requirements: Include when specific insurance coverage is required from sublicensee

5. Export Control: Include for international agreements or when products may be subject to export restrictions

6. Environmental Compliance: Include when licensed products or their manufacture involve environmental considerations

7. Change of Control: Include when restrictions on change in sublicensee ownership are needed

What schedules should be included in a Trademark Sublicense Agreement?

1. Schedule A - Licensed Marks: Detailed list and images of all trademarks covered by the agreement, including registration numbers

2. Schedule B - Licensed Products: Comprehensive list of products/services authorized under the sublicense

3. Schedule C - Territory: Detailed description of geographic territories where sublicense is valid

4. Schedule D - Quality Standards: Specific quality control requirements and standards for licensed products

5. Schedule E - Royalty Calculations: Detailed methodology for calculating royalties, including any minimum guarantees

6. Schedule F - Brand Guidelines: Specific requirements for trademark usage, including size, placement, and color specifications

7. Appendix 1 - Master License Agreement: Copy or relevant excerpts of the master license agreement

8. Appendix 2 - Approval Procedures: Detailed procedures for obtaining approval for new products or marketing materials

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

South Africa

Publisher

Genie AI

Document Type

License Agreement

Sector

IP

Cost

Free to use
Relevant legal definitions
Clauses
Relevant Industries

Retail

Manufacturing

Consumer Goods

Fashion and Apparel

Food and Beverage

Technology

Entertainment

Sports and Recreation

Franchising

Pharmaceuticals

Automotive

Hospitality

Relevant Teams

Legal

Intellectual Property

Brand Management

Commercial

Business Development

Compliance

Marketing

Finance

Operations

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Manager

Commercial Director

Licensing Manager

Business Development Manager

Franchise Manager

Chief Legal Officer

Compliance Officer

Contract Manager

Chief Commercial Officer

Trademark Attorney

General Counsel

Industries
Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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