Permission to use (license) a trademark that has been registered

We are expanding our business and will be selling our products on a large scale in various regions of Japan. We would like to ask a company we have partnered with to manufacture and sell our products in the Kansai region. The name of the product is registered as a trademark. Is there anything I should be aware of in this case? And is there any better way to do this? Mr. DX, would you let me know if you know?
Yes, there is. If the name of the product is registered as a trademark, then you should have a license agreement, or permission to use the registered trademark. If you sign a license agreement, you will receive a fee for the use of the registered trademark (license fee).

1. what is a trademark license?

目次 Index
  1. What are trademark rights? Exclusive and exclusive right protected by trademark law.  (Unlike copyright, which is protected without registration, registration is required.)
  2. What is a license to use?
  3. When you want to expand your business and want your partner company to produce your products.
  4.  When the trademark (character trademark or logo) you wish to use is registered.
  5. Normal right to use and exclusive right to use

What are trademark rights? Exclusive and exclusive right protected by trademark law.  (Unlike copyright, which is protected without registration, registration is required.)

By applying for and obtaining trademark rights for a trademark of his/her choice, the trademark owner may use the registered trademark (e.g., letters or logo) exclusively. This allows the trademark owner to maintain business confidence and order in business transactions, and to protect the interests of ordinary consumers who purchase products bearing the trademark on trust.

What is a license to use?

Trademark right holders may not only use the registered trademark themselves but may also grant a license to a third party to use a trademark that is identical or similar to the registered trademark.

The licensed party has the right to use the registered trademark within the scope set in the license agreement.

Here, within the scope set in the license agreement means, for example, a certain period (e.g., three years), a certain geographical area (e.g., the Kanto region, etc.), etc. The trademark owner may obtain a royalty (license fee) as consideration.

2.When do you license the use of a trademark?

When you want to expand your business and want your partner company to produce your products.

As in the above conversation between Mr. DX and Mr. Gomaji, for example, when you expand your business and ask a partner company to produce and sell your products, you grant permission to use the registered trademark on those products, in other words, you make a license agreement.

 When the trademark (character trademark or logo) you wish to use is registered.

I am planning to name, manufacture, and sell a newly developed product, but someone else has registered the same trademark as the name of that product. It seems that the person is not using that trademark, but using that name would be a trademark infringement. I should have checked the registered trademark earlier. What should I do?
You can get the right to use a registered trademark or a trademark similar to it by signing a license agreement with the trademark owner. It is better to sign a license agreement and, if possible, register the right to use with the Patent Office. The registration procedure can be done by submitting an application to the Patent Office, but you will need the cooperation of the trademark owner to complete the process. In this case, it is advisable to consult a patent attorney who is familiar with the procedures and can prepare the documents for you.
Thank you. A license agreement for a registered trademark, huh? I’ll talk to the patent office.

3.Are there different types of licenses?

Normal right to use and exclusive right to use

Exclusive right to use

The exclusive right to use is real rights, and the right to use the registered trademark in connection with the designated goods, services (services), etc. within the scope specified in the act of establishment. In other words, only the holder of the exclusive right to use may use the registered trademark within the scope specified in the act of establishment. The exclusive right to use cannot be established for the prohibited right (a right similar in scope to the registered trademark).

Registration is a requirement for the exclusive right to use to become effective, and the exclusive right to use becomes effective upon registration of the exclusive right to use with the Patent Office.

・Normal Right to Use

The normal right to use is the non-exclusive right, the creditable right, and the right to use the registered trademark in connection with the designated goods, services, etc. within the scope specified in the act of establishment. In other words, the holder of the trademark right may grant the non-exclusive right to use to multiple persons at the same time. (There is also an “exclusive non-exclusive license to grant a non-exclusive license” to only one company, etc.) However, a non-exclusive license cannot be established for the prohibited portion of the right.

Registration is a requirement to oppose a third party, and unless the non-exclusive license is registered with the Patent Office, it is not possible to oppose a person who has acquired the trademark right later. In other words, even if you have a license agreement with the trademark owner, if you have not registered your non-exclusive right to use, if there is a change in the trademark owner, i.e., if the trademark owner transfers the trademark rights to a new trademark owner, the use of the registered trademark by the non-exclusive right holder may be an infringement of the new trademark owner’s trademark rights. However, since the parties are free to decide whether or not to register the non-exclusive right to use, the trademark right holder is not obligated to register the non-exclusive right to use in principle unless there is a special agreement between the parties to register the non-exclusive right to use.

4.How do I register or apply for a license?

First, a trademark license agreement is concluded between the parties. The licensed trademark is specified, and the scope of products, etc., in which the trademark may be used, the regions in which the trademark may be used, the period during which the trademark may be used, and the license fee are agreed upon. The establishment of an exclusive right to use or a non-exclusive right to use itself can be done by agreement between the parties concerned and does not require permission from the JPO.

To register an exclusive right to use, fill out an application for registration of establishment of exclusive right to use, and to register a non-exclusive right to use, fill out an application for registration of establishment of non-exclusive right to use.

After confirming the contents, submit the application to the JPO for registration of exclusive right to use or non-exclusive right to use.

5.Supervisory responsibility of the holder of trademark right

The holder of trademark right bears considerable supervisory responsibility for the holder of exclusive or non-exclusive right to use.

If the exclusive or non-exclusive licensee misuses the trademark in a way that causes misidentification of quality or confusion of origin (including inferior quality), the entire trademark right will be revoked, unless the trademark owner was unaware of such fact and took reasonable care.

Because licensing agreements can be time-consuming and expensive, we recommend that you search for your product’s name to ensure that it is not registered, and register your trademark before doing business.  AmazingDX is a new trademark application search service that saves you time and money. AmazingDX is a service provided by a large and experienced international patent firm, so you can rest assured that your trademark application will be handled with the utmost care. We will be happy to provide you with relevant information and answer any questions you may have.

Amazing DX
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supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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