1. Identification of Parties
Licensor (“Licensor”): Although the licensor is usually the trademark owner, there are also cases where the licensee has the title of licensor if the agreement permits the grant of a sublicense. The main obligation of the licensor under the license agreement is to ensure that the right over the trademark is used by the licensee and to take measures to guarantee the quality of the goods produced or services provided by the licensee.
Licensee (Licensee): The person or organization that obtains the right to use the trademark. The licensee may be one or more real persons (personal license) or legal entities (business license). The main obligation of the licensee under the trademark license agreement is to pay this fee to the licensor, if a fee has been agreed. Pursuant to Article 29-ç of the IPL, the licensee may not expand its rights granted through the license without permission or transfer these rights to third parties. Otherwise, such use by the licensee shall be deemed as infringement of the trademark right.
2. Scope of the License
Trademark Definition: Kullanılacak marka ve ilgili marka tescil numaraları açıkça belirtilmelidir.
Scope: The licensor may grant the license on all goods and services for which the trademark is registered, or it is possible to limit the license right by class and grant the license only for certain goods and services. The point to be considered in partial license agreements is that if the licensee uses the trademark on goods and services other than the goods and services agreed upon in the agreement, the license right granted will be extended without permission. Within the scope of the right of use, authorizations such as production, sales and distribution are also transferred with the license agreement. In this respect, it is another possibility for the trademark right holder to limit the authorizations in the license agreement and to grant a license only for certain authorizations.
Geographical Region: It should be specified for which products or services and in which geographical area the license is valid. In practice, the license is usually granted to cover the whole of Turkey. However, if agreed upon in the agreement, the license may be granted only for certain geographical regions. In this case, the licensee will only have the right to use the trademark in the regions specified in the agreement.
3. License Type
Exclusive License: It is a type of license where only the licensee can use the trademark and the licensor cannot grant a license right to a third party for the same trademark. Under this type, unless the licensor has expressly reserved its right in the agreement, it cannot use the trademark itself.
Non-Exclusive License: It is a type of license where the licensor reserves both the right to use the trademark itself and the right to license it to third parties. In case it is not explicitly agreed between the parties in the legislation, the license granted is considered non-exclusive.
Limited (Sole) License: A situation where the licensor itself may use the trademark, but does not grant rights to other licensees.4. Lisansın Üçüncü Kişilere Karşı Korunması
Pursuant to the IPL, the exclusive licensee has the right to bring the actions that the licensor may bring pursuant to the IPL in the event of an infringement of the trademark right. However, since the exclusive licensee’s right to file a lawsuit is a right granted to him by law and is not an obligation or duty, no liability arises if lisancee does not file a lawsuit.
Pursuant to Article 158/2 of the IPL, the non-exclusive licensee is obliged to request the licensor to file a lawsuit in case of trademark infringement. If the licensor does not accept this request despite the licensee’s request or does not file a lawsuit within three months, the licensee may file a lawsuit on its own behalf. However, if there is a serious danger of damage, the licensee may request an interim injunction from the court before the three-month period expires.
Exclusive or non-exclusive licensees do not have the right to object in case of the same or similar trademark application before the TPTO.
5.Granting a Sub-License
Article 24/3 of the IPL stipulates that “Unless otherwise agreed in the agreement, licensees may not transfer their rights arising from the license to third parties or grant sublicenses.”, making the granting of a sublicense conditional upon the parties agreeing otherwise in the agreement.
The limits of the primary license agreement in terms of duration, class, authorization and geographical area constitute the upper limits of the sub-license agreement.
It is accepted in the doctrine that if the main license agreement is invalid or terminated for any reason, the sublicense agreement will also automatically terminate.
6. Term of The License
Start and End Dates: The dates between which the agreement will be valid should be clearly stated.
Indefinite License: If a specific period is not specified, it should be clarified that it may be indefinite. In the doctrine, if the license agreement is made indefinitely, there is a view that the upper limit is the 10-year protection period to be calculated from the date of the trademark’s registration application; however, it is also argued that the license period is not limited to the trademark protection period, since the trademark protection can be renewed.
7. Fees and Payment Terms
License Fee: Can be a fixed fee, annual fee or a percentage of sales.
Time and Method of Payment: How and when payments will be made should be specified.
Free License: However, there are also trademark license agreements where the licensee does not commit to pay a fee. Such trademark license agreements are also referred to as free licenses.
8. Terms of Use
Quality Control: The standards by which the licensee will use the brand and quality control processes.
Reporting and Audit: The licensee’s regular reporting to the licensor on the use of the trademark and the right to audit.
9. Breaches and Termination
Breaches: Sanctions to be applied in case of the parties fials to comply with the terms of the agreement.
Termination: If a period of time is specified in the license agreement, as a rule, it will expire upon the expiration of this period. In addition, in the event that the trademark right expires due to reasons such as the expiration and non-renewal of the protection period, withdrawal of the trademark owner’s renunciation of the trademark right, the license agreement will expire together with the trademark right, since the trademark right on which the agreement is based will have disappeared. For this reason, Article 28 of the IPL stipulates that the trademark owner cannot relinquish the trademark right and withdraw the trademark application without the consent of the registered licensees. In addition, the license agreement may be terminated for just cause in accordance with the general provisions of the Code of Obligations, without prejudice to the provisions of the agreement.
10. Confidentiality and Non-Competition
Confidentiality: The obligation of the parties to protect confidential information during and after the contract.
Non-Competition: The license must not be a direct competitor of the licensor for a certain period of time.
11. Dispute Resolution
Jurisdiction and Law: Which courts will have jurisdiction in the event of a dispute and which law will apply.
Mediation and Arbitration: The use of alternative methods such as mediation or arbitration in resolving disputes.
12. Other Provisions
Amendments: How changes to the contract will be made.
Notifications: How and where the parties will notify each other.