ELZABURU

Fashion Law. Licensing (XIII)

The ELZABURU firm has had the pleasure of collaborating with the Thomson-Reuters Aranzadi publishing house on the work Fashion Law, a pioneering treatise in Spain on fashion law, which was presented on April 16.

With these small weekly summaries, the ELZABURU professionals who have collaborated on the work offer us a brief overview of their contribution:

Discharge

An license It is a means available the owner of an intangible asset to allow its use by a third party under a series of conditions. Unlike the transfer, the license does not transfer ownership of the asset, it only grants the possibility of exploiting it for a limited period of time and in a specific territory.

The licenses give the possibility to licensor to exploit an asset in territories or markets that it may not initially be interested in or cannot access on its own.

It must be pointed out that a license can be granted both on rights whose birth is conditioned by their registration in a patent and trademark office, and on rights whose birth is not determined by this formality, such as copyright or business secret; In the latter case, it will be advisable to establish asset protection protocols and control systems for its use. It is also possible that several intangible assets are licensed in the same agreement, as is common in franchise contracts, in which brands, designs, technical know-how, etc.

The fundamental instrument for granting licenses are contracts, in which text the parties can establish any conditions they agree to govern said license. However, a license agreement usually contains a series of clauses that contribute to the strength and coherence of the contractual document.

Thus, the presence of clauses that define the purpose of the license, its duration and its territorial scope will allow delimit the content of the license.

In relation to assets, it is advisable to include both a intellectual property clause (explaining the ownership of the assets, which party will be responsible for defending them in the event of infringement by a third party, if possible sublicensing, and prohibiting registration by the licensee), as a control and audit clause (in which verification mechanisms are agreed on the use of the asset that the licensee is carrying out and compliance with the conditions of the license, as well as the correct communication of the results of the exploitation of the assets).

Regarding license feeIf it is onerous, the most common options for structuring this clause are basically 4:

(i) the payment of a fixed amount for the entire duration of the license.
(ii) the payment of an amount for each year of license.
(iii) the payment of a percentage of the profits obtained from the commercialization of the asset in question.
(iv) the payment of an entry fee, plus a percentage of the profits obtained. A combination of these forms or the use of any other system agreed upon by the parties is also possible.

Incorporation other clauses -such as early termination or applicable law and jurisdiction- are essential to provide legal security to the agreement and avoid additional problems in the event of disputes.

Finally, it is necessary to highlight that in order for license agreements are enforceable Regarding third parties in good faith, it is necessary to register them in the relevant registries, such as those managed by industrial property offices (the OEPM) or in intellectual property registries.

Authors: beautiful martin y Alba Maria Lopez

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La Fashion Law series It is made up of the following deliveries:

1. The protection of brands in the fashion sector (23.04.2018)

2.The protection of designs in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5.Image rights in the world of fashion (28.05.2018)

6.Data Fashion: privacy and data protection issues (04.06.2018)

7.Counterfeiting and piracy in fashion (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.LCorporate reputation in the fashion sector (25.06.2018)