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Trademark Use Agreement

Trademark Use Agreement Template for Canada

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Key Requirements PROMPT example:

Trademark Use Agreement

"I need a Trademark Use Agreement for my software company to license our registered trademark 'CloudSecure' to a Canadian distributor on a non-exclusive basis, with quality control provisions and quarterly royalty payments of 5% of net sales."

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Document background
A Trademark Use Agreement is essential when a business wants to legally permit another entity to use its trademark(s) in Canada. This document, governed by Canadian federal and provincial laws, particularly the Trademarks Act (R.S.C., 1985, c. T-13), establishes the framework for controlled trademark licensing while maintaining the owner's rights and the mark's integrity. It's commonly used in franchising, merchandising, brand collaborations, and international business expansions. The agreement covers crucial elements such as scope of use, quality control measures, territory restrictions, royalty structures, and compliance requirements. It helps protect the trademark owner's intellectual property rights while providing the licensee with clear parameters for authorized use. The document must comply with Canadian trademark law requirements for valid licensing arrangements, including provisions for quality control and monitoring.
Suggested Sections

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, description of the trademark(s), and the parties' intentions

3. Definitions: Definitions of key terms used throughout the agreement, including 'Licensed Marks', 'Territory', 'Licensed Products', 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 allowing for termination

6. Quality Control: Standards for using the trademark, approval processes, and quality maintenance requirements

7. Royalties and Payments: Financial terms, payment schedules, reporting requirements, and audit rights

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

9. Representations and Warranties: Parties' assertions about trademark ownership, right to license, and other material facts

10. Indemnification: Mutual or unilateral indemnification obligations for trademark-related claims

11. Confidentiality: Protection of confidential information exchanged during the agreement

12. General Provisions: Standard clauses including governing law, notices, assignment, and amendment procedures

Optional Sections

1. Sublicensing Rights: Include when licensee is permitted to sublicense the trademark to third parties

2. Marketing and Promotion: Include when specific marketing requirements or restrictions need to be detailed

3. E-commerce Usage: Include when trademark use in online platforms needs specific regulation

4. International Usage: Include when trademark use spans multiple jurisdictions

5. Co-branding Provisions: Include when the trademark will be used alongside other brands

6. Social Media Usage: Include when social media use of the trademark needs specific regulation

7. Post-Termination Obligations: Include when specific wind-down provisions are needed

8. Dispute Resolution: Include when specific arbitration or mediation procedures are desired

Suggested Schedules

1. Schedule A - Licensed Marks: Detailed list and images of all licensed trademarks, including registration numbers

2. Schedule B - Licensed Products/Services: Comprehensive list of products or services for which trademark use is permitted

3. Schedule C - Quality Standards: Detailed quality control specifications and requirements

4. Schedule D - Brand Guidelines: Visual guidelines for trademark usage, including size, color, and positioning requirements

5. Schedule E - Territory Definition: Detailed description of geographic areas where use is permitted

6. Schedule F - Royalty Calculations: Detailed methodology for calculating royalties and payment terms

7. Appendix 1 - Approval Procedures: Step-by-step procedures for obtaining approval for trademark use

8. Appendix 2 - Reporting Templates: Standard forms for required periodic reports and notifications

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

Linkedin in social icon imageX social icon image
alex.den.21@genieai.co
Relevant legal definitions
Agreement
Affiliate
Approved Products
Approved Services
Brand Guidelines
Business Day
Commencement Date
Confidential Information
Effective Date
Force Majeure
Gross Sales
Intellectual Property Rights
Licensed Marks
Licensed Products
Licensed Services
Licensed Territory
Licensing Fee
Marketing Materials
Net Sales
Quality Standards
Quarterly Report
Royalty Rate
Royalty Period
Sublicense
Term
Territory
Trade-marks Act
Trademark Office
Trademark Rights
Use
Valid Claim
Working Day
Relevant Industries

Retail

Consumer Goods

Technology

Fashion and Apparel

Food and Beverage

Entertainment

Sports and Recreation

Manufacturing

Professional Services

Media and Publishing

E-commerce

Franchising

Pharmaceutical

Automotive

Education

Relevant Teams

Legal

Intellectual Property

Brand Management

Marketing

Business Development

Compliance

Commercial Operations

Risk Management

Corporate Affairs

International Business

Relevant Roles

Intellectual Property Counsel

Brand Manager

Licensing Director

Legal Counsel

Commercial Director

Business Development Manager

Franchise Manager

Compliance Officer

Chief Legal Officer

Marketing Director

Chief Executive Officer

Trademark Attorney

Contract Manager

Risk Manager

Corporate Counsel

Industries
Trademarks Act (R.S.C., 1985, c. T-13): The primary federal legislation governing trademarks in Canada, covering registration, use, licensing, and enforcement of trademark rights
Competition Act (R.S.C., 1985, c. C-34): Federal legislation relevant to ensuring trademark licensing agreements don't create anti-competitive market conditions
Paris Convention for the Protection of Industrial Property: International treaty establishing basic principles for trademark protection across member countries, which Canada has ratified
Madrid Protocol: International treaty facilitating global trademark registration and protection, which affects how Canadian trademarks may be used internationally
Provincial Contract Law: Provincial laws governing contract formation, enforcement, and remedies, which vary by province but follow common law principles in most of Canada
Consumer Protection Act (Various Provincial Versions): Provincial legislation protecting consumer interests, relevant when trademark use affects consumer-facing products or services
Trade-marks Regulations (SOR/96-195): Federal regulations providing detailed requirements for trademark registration, maintenance, and licensing procedures
Personal Information Protection and Electronic Documents Act (PIPEDA): Federal privacy legislation that may be relevant if the trademark use involves collection or processing of personal information
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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