Reviewing a trade mark licence

A trade mark licence lets one business use another's registered mark on defined goods or services in a defined territory. The Trade Marks Act 1994 sets requirements the licence must meet to be valid and gives the licensee rights that depend on the licence's wording, and the licensor's control of quality decides whether the registration survives. I review the licence from whichever side instructs me and return it marked up with a written explanation of the changes and the statutory points that decide them, for a fixed fee of £495 in three working days.

Who this is for

Businesses in England and Wales taking a licence to use another company's registered trade mark, for manufacturing, distribution, franchising, co-branding or merchandising, and trade mark owners granting one. Both parties are businesses.

What to look for in a trade mark licence

Validity: writing, signature and the marks identified

Under section 28 of the Trade Marks Act 1994 a licence to use a registered trade mark is not effective unless it is in writing signed by or on behalf of the grantor, and it may be general or limited to some of the goods or services, to a locality or to a manner of use. The review checks that the licence identifies each mark by registration number, class and the goods or services covered, that it is signed by the proprietor, and that the licensed goods match the registration, because use outside the specification is not licensed use.

Exclusivity and the licensee's rights against infringers

An exclusive licence under section 29 of the Trade Marks Act 1994 excludes even the proprietor from using the mark in the licensed field, and may give the licensee the rights and remedies of the proprietor. Under section 30 a licensee may call on the proprietor to sue an infringer and may sue itself if the proprietor does not act within two months, unless the licence provides otherwise, and under section 31 an exclusive licensee with the proprietor's rights may sue in its own name. The review checks which of those the licence intends, whether the licensor wants to control infringement action, and who bears the costs and keeps the damages.

Quality control and the risk to the registration

A mark that has become liable to mislead the public as to the nature, quality or origin of goods in consequence of the use made of it by the proprietor or with its consent can be revoked under section 46 of the Trade Marks Act 1994, so a licence without quality control puts the registration at risk as well as the brand. The review asks for a quality standard, approval of samples and materials, inspection rights and a right to require non-conforming goods to be withdrawn, and for the licensee's use to be in the form registered so that it counts as genuine use of the mark.

Registration of the licence and protection against a new owner

A licence is a registrable transaction under section 25 of the Trade Marks Act 1994. Until an application to register it is made, the licence is ineffective against a person acquiring a conflicting interest in the mark without knowledge of it, and a licensee that does not register within six months may lose costs in infringement proceedings. The review asks for the licensor to consent to registration and, for the licensee, checks that the licence binds a purchaser of the mark and survives the licensor's insolvency.

Royalties, goodwill, challenges and sub-licensing

The royalty base, reporting and audit terms follow the pattern for any licence, with interest under the Late Payment of Commercial Debts (Interest) Act 1998 on late payment. The review checks that goodwill from the licensee's use accrues to the licensor, that the licensee will not challenge the mark's validity or register similar marks (a no-challenge clause the licensor can enforce by termination), that sub-licensing needs consent, and that any restriction on the licensee's sales stays within the Competition Act 1998 (Vertical Agreements Block Exemption) Order 2022.

Term, termination and use after the end

The licence should end on expiry of the term, on non-payment, on a quality failure not remedied, on a challenge to the mark, on change of control and on insolvency, with a sell-off period for conforming stock and an obligation to cease all use, to remove the mark from premises, vehicles, websites and social media, and to cancel any domain names containing it. The review checks that the licensor can require the licence's removal from the register on termination and that the licensee's obligations survive.

What it costs

Standard review, £495. Marked-up document and a written explanation of the changes. Three working days.

Buying online forms the engagement on payment. The scope is what the contract review page describes, you accept the Terms of Service at checkout, and I email you within four working hours to get started. If you would rather ask something first, email me.

What you get

• Your own contract returned with my amendments as tracked changes, plus a clean version with every change accepted, ready to send to the other side
• Comments in the document where a point needs explaining
• A written explanation of what I have changed and why, by email or as an attachment if it is lengthy, marking the points I would hold firm on and the ones that are negotiable
• A view on what is normal market practice and what is the other side pushing their luck
• One round of follow-up questions by email, included

What is not included

• Negotiating directly with the other side, which I quote separately once I know who is on the other side. Where the other side is willing to share a live document, I can work in that document directly
• Drafting a replacement contract from scratch
• Advice on the law of any jurisdiction other than England and Wales
• Tax, accounting or regulatory advice
• Disputes about a contract that is already signed

Questions I am often asked

The licence was signed only by us, the licensee. Is it valid?

A trade mark licence is not effective unless it is in writing signed by or on behalf of the grantor, the proprietor. The review checks execution and asks for the licensor's signature, and for the licence to identify the marks by registration number and the goods it covers.

Someone is copying the licensed product. Can we sue them ourselves?

That depends on what the licence says. Unless it provides otherwise, a licensee can call on the proprietor to sue and may sue itself if the proprietor does not act within two months, and an exclusive licensee given the proprietor's rights can sue in its own name. The review checks which position your licence takes.

Should we register the licence at the Intellectual Property Office?

A licensee should. Until registration is applied for, the licence is ineffective against a buyer of the mark who did not know of it, and a licensee that does not register within six months may lose costs in infringement proceedings. The review asks for the licensor's consent to registration.

Related guidance and services

• Contract review, £495, the service this page describes
• Terms and conditions drafting, £995
• Reviewing a licence agreement for your product or brand
• Reviewing a character or brand licence for merchandise

This page is general guidance for businesses in England and Wales, not advice on your own circumstances. Last reviewed: September 2026. Email geoffrey@caesar.co.uk.