Licensing Your Brand

Third-party administrators are often given the right to use the brands of their principals when providing services on their behalf. Similarly, strategic alliances are becoming more common, as can happen when a lender collaborates with an energy company for it to provide services to the lender’s customers. Both of these arrangements will commonly include a license from the brand owner to the administrator or the strategic partner (the licensee).

In any licensing situation, whether as a result of outsourcing or otherwise, the arrangements should include proper trademark- licensing provisions such as –

• Provisions explaining how the brand can be used – in what format or colour
• The brand owner’s (the lender’s) ability to check how the brand is being used by the licensee (the third-party administrator)
• A prohibition on the licensee to register the brand, or anything similar, as a trade mark
• A statement confirming that the goodwill in the brand will still be owned by the brand owner

Obligations on the licensee to inform the brand owner if it becomes aware that any other person is using the brand without the owner’s permission, and conversely, if the licensee becomes aware that the brand infringes any third-party rights.