In the United Kingdom it is not a requirement for a trade mark or design licence to be registered at the UK Intellectual Property Office (UKIPO), so why bother?
If a licence is not registered, any rights held by a licensee are ineffective against any third party to whom the licensor’s rights are later assigned to provided that the third party is ignorant or unaware of the licence. This means the third party takes free from the licence and can ultimately prevent the licensee from continuing to use the rights granted under the original licence.
However, if the third party conducts relevant due diligence and becomes aware of the licence, the third party cannot take ownership of the original licensor’s rights free from the licence.
It is therefore important to record a licence at the UKIPO as soon as possible after grant. Recording the licence will automatically put third parties on notice of it and means that the licence will survive for as long as the associated trade marks or designs remain on the register. This ultimately means the trade marks and/or designs will be less valuable to third parties.
It is important to note that if a licence is not registered within six months of grant, the licensee will not be able to claim its legal costs in any proceedings for infringement which occurred before the licence was registered. Other than this requirement, there is no restriction on when a licence can be registered.
In terms of the registering process, a licensee may apply to the UKIPO to register its interests against the relevant trade marks or designs. Permission from the licensor is not required but a licensee will need to provide proof of the licence when making the application together with a covering letter. Form TM50 must be completed and there is a registration fee of £50. The licence itself will not be available online but third parties can make a request to access all documents filed. It is therefore important to consider whether any confidential terms should be redacted before filing.