Trademark license in Tunisia

A trademark license is basically an agreement in which a trademark owner (the “licensor”) permits someone else (“the “licensee”) to use the licensor’s trademark in connection with specific products or services.

Although a trademark license agreement is not required to be in writing to be legally enforceable, it is strongly recommended that all trademark licensing agreements be in writing and signed by both the licensor and licensee.

Recordal requirements for getting a Trademark license in Tunisia :

Although the terms of every trademark license are different and may be freely negotiated between the licensor and licensee, all licenses must at least include the following provisions to be valid:

• The legal names of the licensor and licensee;
• Identification of the trademark(s) that are the subject of the licensing agreement;
• Identification of the products/services with which the licensed mark may be used.

Trademark license in Tunisia is valid for 10 years after which it needs to be renewed.

From a licensor’s perspective, the quality control provisions of a trademark license are the most important.  The licensor must continuously make sure that the licensee’s products/services meet a certain standard or else the value of the licensor’s trademark could be harmed.  Furthermore, licensors often require that any advertising and promotional materials created by their licensees be approved prior to being publicly disseminated.  The failure of a licensor to demand and enforce strict quality control can leave the licensor’s trademark vulnerable to attack by third parties and the mark may ultimately be deemed to have been abandoned.

Of course, the provisions listed above are not the only ones that the parties to a trademark license should consider. Optimally, a trademark license should also explicitly state (1) whether the license is exclusive or non-exclusive, (2) the duration of the license, (3) whether the license may be renewed and under what conditions, (4) the amount of any royalty payments or other compensation due to the licensor and when those payments are to be made, (5) the responsibilities of both parties upon the termination or expiration of the license, and (6) the consequences of breaching the license and the time in which the breach must be remedied

It is recommended that the trademark assignment being registered in the Tunisian Trademark Office (INNORPI). However, many licenses include confidential or commercially sensitive information that the parties may not want available to the public. In those cases, it may be possible to record a redacted version of the license agreement or to file a separate document executed by the parties that makes reference to the existence of a license.

In conclusion, trademark licensing can be an effective and relatively inexpensive way for a trademark owner to expand the use and public recognition of its trademark. But, there are also many pitfalls of which licensors must be aware in order to avoid diminishing the value of their trademarks or, even worse, losing their trademark rights all together.

Everything related to trademark license is governed by the Law No 36 dated 17/4/2001. So do not hesitate to contact us to record a trademark assignment in Tunisia.

Our practice covers also :

• Trademark search in Tunisia
• Filing trademark application in Tunisia
• Tunisian Trademark registration
• International Trademark registration
• Trademark Opposition in Tunisia
• Trademark cancellation
• Trademark assignment in Tunisia
• Trademark registration changes
• Trademark renewal in Tunisia
• Trademark due diligence in Tunisia
• Trademark protection in Tunisia
• Trademark watching services in Tunisia
• Trademark Portfolio Management in Tunisia
• Customs seizure proceedings in Tunisia
• Trademark infringement