Trademark licensing

Trademark licensing, also known as “leasing” the trademark  in the common language, is a mechanism for transferring trademark rights. Unlike the cession of the trademark, the mechanism by which the owner of a trademark permanently and unlimitedly alienates its rights over the trademark, through licensing the owner retains ownership of the trademark and part of its attributes.

Thus, under a license agreement, the owner of a trademark registered with OSIM may authorize third parties to use its trademark throughout Romania or only in a strictly determined territory, for all or only for some of the products or services for which the trademark has been registered.

Depending on the prerogatives that the trademark owner chooses to retain in relation to his trademark, licenses can be of two types:

  1. Exclusive license – the contract by which the trademark owner authorizes a person to use his trademark exclusively, with the guarantee that the trademark will not be licensed to other persons and he himself will not be able to use it.
  2. Non-exclusive license – is the type of license by which the trademark holder retains the prerogative to use the trademark as well as the prerogative to sublicense to other persons.

The legal provisions in force also impose a number of obligations on the licensee in relation to the right to use the trademark, such as:

compliance with the limits of the license agreement regarding the length of time, space as well as the products / services for which the trademark will be used (if we consider a partial license).

use of the trademark  together with the words “under license” for the products for which the license has been granted (nevertheless having the freedom to affix signs to those products indicating that he is the manufacturer thereof).

The license application is submitted to OSIM by the trademark owner or the licensee, with the payment of the fee provided by law, and will be accompanied by an extract from the license agreement indicating the rights transmitted, to be published in the Official Industrial Property Bulletin. The reason is to ensure that those actions are opposable against the trademark, in the sense that no person will be able to say that he did not know of the existence of that action.

The terms of a license agreement must be drafted carefully and require the special attention of an intellectual property advisor, which is why trademark owners are encouraged to seek the assistance of a specialist when carrying out such procedures.