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This Trademark Licensing Agreement (this “Agreement”) is entered into on the [ ] day of [ ] Commented [C&G1]: We note that the

2017. Trademark Licensing Agreement (TLA) is a form


of Technology Transfer Agreement (TTA) which
is therefore subject to the provisions of the
BETWEEN: Intellectual Property Code (IPC) on voluntary
licensing, particular Section 87 (prohibited
provisions), Section 88 (mandatory provisions),
Section 91 (exceptions), Section 92 (non-
XXX (the “Licensor”); registration) and Section 150 (license contracts
under the Law on Trademarks):

AND 1.Section 87 – none of the provisions in the


present draft of the Deed appear to be a
prohibited provision.

YYY (the “Licensee”) 2. Section 88 – note that the applicable


mandatory provisions under this section
require the inclusion of the following
(each a "Party", and collectively, the "Parties"). provisions:

(a) That Philippine law govern the


NOW, THEREFORE, in consideration of the premises and the mutual covenants and agreements
interpretation and the venue for litigation
hereinafter set forth and for other good and valuable consideration as set forth herein, the Licensor and the shall be wherethe Licensee holds principal
Licensee agree as follows: office; and

1. Definitions (b)That Philippine taxes relating to the TTA be


borne by the Licensor;
(A) “Business” means the business of the Licensee of providing logistics and courier
3. Section 91 – Parties may apply for
services in the Territory for the e-commerce sector. exemption from Sections 87 and 88 which
may be granted by the Documentation,
(B) “Business Day” means any day from Monday to Saturday, except Sundays and Information, and Technology Transfer Bureau
public holidays, in Singapore. (DITTB) of the Intellectual Property Office
(IPO).
(C) “Effective Date” means [the date of this Agreement].
4. Section 92 – Unless the parties are granted
the exemption under Section 91, non-
(D) “Encumbrance” means any form of legal, equitable, or security interests, including conformance with Section 87 and 88 would
but not limited to any mortgage, assignment, debenture, lien, charge, pledge, right to render the Deed unenforceable.
acquire, hypothecation, option, right of first refusal, pre-emption right (other than those
5. Section 150.1 – any license contract
which appear in a company's articles of association or constitutive document), any
concerning the registration of a mark or an
preference arrangement (including title transfers and retention arrangements or application therefore shall provide for
otherwise) or any other encumbrance or condition whatsoever or any other effective control by the Licensor over the
arrangements having similar effect. quality of the goods or services of the
Licensee in connection with which the mark is
(E) “Invoiced Amount” has the meaning ascribed to it in Clause 3(A)(iii). used. Absent this provision, the contract (or
Deed in this case) shall not be valid.

(F) “Licence” means a non-exclusive licence to use the Marks, granted by the Licensor 6. Section 150.2 – a license contract shall be
to the Licensee, solely for use in the course of its Business within the Territory. submitted to the DITTB for recording and the
same shall have no effect against third parties
(G) “Marks” means the registered and unregistered trademarks and trade names as listed until said recording.
in Appendix A, the ownership or right to use of which belongs to the Licensor during
The present draft of the TLA complies with the
the duration of this Agreement. mandatory provisions of the IPC.

(H) “Materials” has the meaning ascribed to it in Clause 2(A).

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(I) “Monthly Statement” has the meaning ascribed to it in Clause 3(A)(ii).

(J) “Notice of Non-Renewal” has the meaning ascribed to it in Clause 5(A).

(K) “Royalties” means the amount determined in accordance with Clause 3(A)(i).

(L) “Term” means the period during which this Agreement is in effect, which shall mean
the period described at Clause 5(A).

(M) “Territory” means the entire jurisdiction of the Republic of the Philippines.

(N) “USD” means the United States Dollar, which is the official currency of the United
States of America.

2. Grant of Licence

(A) The Licensor hereby grants to the Licensee, in accordance with the terms and
conditions of this Agreement, a non-exclusive licence to use the Marks in the course
of its Business within the Territory, and for no other purpose whatsoever without the
express written permission of the Licensor. The Licensee shall not sell or distribute
the Marks in any way. The Licensee may utilise the Marks in accordance with the
terms and conditions of this Agreement and the prescriptions set out in Appendix B
to this Agreement, for general advertising materials and point of sale displays,
advertising, and other promotional materials for the Marks, as well as for undertaking
the Business (“Materials”). Any other use of the Marks by the Licensee shall only
occur upon the receipt of prior written approval from the Licensor.

(B) The Licensee shall not sell, sub-license or distribute the Marks in any way without
the prior express written approval of the Licensor.

(C) The Licensee hereby accepts the Licence and agrees that the Licensee shall not use
the Marks except in accordance with the terms and conditions of this Agreement and
the prescriptions set out in Appendix B to this Agreement. The Licensee
acknowledges and agrees that the Licence granted herein is non-exclusive and that
the Licensor may license the use of the Marks to others within or outside the
Territory.

(D) The Licensee shall use the Marks in the form stipulated in Appendix B to this
Agreement, and as stipulated from time to time by the Licensor, and shall observe
any reasonable directions given by the Licensor as to colour and size of
representations of the Marks and the manner and disposition in relation to any
Materials which make use of the Marks. If so directed by the Licensor, the Licensee
shall accompany the Marks with wording and clear marking (such as the use the
symbol “®” or “TM” adjacent to the Marks) showing that the Marks are registered
trademarks used by the Licensee with the permission of the Licensor. The Licensee
shall comply with the terms of such wording and its placing, in accordance with the
Licensor’s directions, acting reasonably.

(E) The Licensee hereby accepts that all goodwill generated by its operations under this
Agreement belongs to the Licensor.

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3. Payments and Accounting

(A) Royalties

(i) In consideration of the grant of the Licence by the Licensor to the Licensee,
the Licensee shall pay to the Licensor royalties calculated at the rate of
[ten percent (10%)] of the gross revenue of the Business on a monthly
basis (“Royalties”).
Commented [C&G2]: Please note that should the
(ii) During the Term of this Agreement, the Licensee shall, at the end of each Licensee purchase USD from Philippine banks
for the payment of royalties, the following
calendar month, deliver to the Licensor a monthly statement giving the
documents must be submitted to the banks as
particulars of the gross revenue of the Business, together with the provided under Section 2 of the Manual of
Royalties payable by the Licensee to the Licensor, for such calendar Regulations on Foreign Exchange Transactions:
month (“Monthly Statement”).
1.For sale not exceeding USD1,000,000 or its
equivalent in other foreign currency per client
(iii) The Licensor may, within [●] days from the receipt of the Monthly
per day: duly accomplished Application to
Statement, invoice the Licensee for the full amount of the Royalties Purchase Foreign Exchange in the prescribed
payable by the Licensee (“Invoiced Amount”). format;

(B) Payment Method 2.For sale exceeding USD1,000,000 or its


equivalent in other foreign currency per client
per day: (a) duly accomplished Application to
(i) All payments made in connection with this Agreement shall be made in
Purchase Foreign Exchange in the prescribed
USD, unless otherwise agreed by both Parties. For the avoidance of format (b) statement/computation of the
doubt, Royalties once paid shall not be refunded for any reason royalty; and (c) photocopy of
whatsoever. contract/agreement.

The sale of USD will not require prior approval


(ii) All payments made in connection with this Agreement shall be made and
of the Bangko Sentral ng Pilipinas, the country’s
settled in a bank account specified by the Licensor in writing. central bank.

(iii) The Licensee shall pay the Invoiced Amount within ten (10) Business Days All foreign exchange purchases shall either be:
of receipt of the relevant invoice. (a) remitted directly to the intended non-
resident beneficiary’s account (including
payment/treasury centers/hubs of a group of
(iv) Late payments by the Licensee in connection with this Agreement shall
companies) on the date of purchase; or (b)
incur interest at the rate of [●] percent ([●] %) per month from the date credited to the resident purchaser’s FCDU
such payments were originally due until a full and final payment has been account (with the same or another bank) for
made by the Licensee in respect of such payments. eventual remittance by the depository bank to
the non-resident beneficiary (including
(v) All Royalties shall be paid in full by the Licensee to the Licensor without payment/treasury centers/hubs of a group of
companies) for the declared purpose: Provided,
any deduction whatsoever. Any amount which the Licensee may be that if the depository bank is different from the
obliged to pay to any governmental or tax authorities under the laws of the foreign exchange selling institution: (i) the
Territory or otherwise, including all and any withholding tax liabilities which foreign exchange selling institution shall directly
may arise from this Agreement, shall be paid in full by the Licensee within transfer the foreign exchange sold to the
depository bank of the purchaser; and (ii) the
the period for payment permitted by applicable law, and shall be the sole
depository bank shall also be the foreign
responsibility of the Licensee. The Licensee shall provide the Licensor exchange remitting AAB.
within [●] days with a copy of all submissions and payments of all taxes.
The Licensor shall not be responsible for the tax liabilities of the Licensee, The foregoing is only relevant in cases the
nor shall the Licensor be responsible for reimbursing the Licensee for the Licensee has to source the payment of royalties
from the banking system. If it has other foreign
same. The Licensee shall be responsible for any penalties, interests,
exchange sources, e.g., its service agreements
surcharges, and any other expenses incurred by, or assessed against, the with its clients are paid in USD, then it does not
have to comply with the rules above.

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Licensor as a result of the Licensee’s failure and/or neglect to withhold
and/or pay the tax to the appropriate authorities. Commented [C&G3]: We understand that taxes
shall be paid by the Licensee as a withholding
(C) Accounting Books agent and any amount receivable by the
Licensor would be grossed up such that no
(i) The Licensee shall keep full, true and accurate records and books of deduction for taxes would be made. While this
is a valid stipulation, we note that the statutory
account, which records and books of account shall contain sufficient taxpayer is still the Licensor, since it is the
details to establish the gross revenue of the Business and any payments recipient or earner of income. In this regard,
due to the Licensor under this Agreement. we propose Licensor to require Licensee to
provide it with proof of payment of the taxes
(ii) The Licensor shall, at its option, have access to such records and books within five (5) days.
of account and operations upon reasonable notice and at reasonable
times for the purpose of determining the accuracy of the Licensee’s
payments, compliance with the terms and conditions of this Agreement
and/or applications by the Licensor to tax authorities for tax credits,
exemptions or refunds available for any tax paid or payable by the
Licensor. The Licensee shall fully and promptly cooperate with the
Licensor to provide such information and records as the Licensor may
request, including all documents necessary to evidence the payment of
tax.

(iii) In the event that an inspection of the Licensee’s records and books of
account reveals a discrepancy between the Monthly Statements and the
actual gross revenue of the Business, the Licensee shall pay to the
Licensor the discrepancy between the correct amount of Royalties owed
to the Licensor and what was actually paid, plus interest, calculated at the
rate of [●] percent ([●] %) per month, without any deduction whatsoever.
In the event that such discrepancy is in excess of [●] percent ([●] %), the
Licensee shall also reimburse the Licensor for the cost of such inspection,
including any attorney's fees and accountant’s fees incurred in connection
therewith. Taxes arising from the discrepancy, and any interests,
penalties, surcharges, or other expenses incurred as a result of the
Licensee’s failure and/or neglect to withhold and/or pay tax shall likewise
be the sole responsibility of the Licensee. Similarly, the Licensee shall
provide the Licensor within [●] days with a copy of all submissions and
payments of taxes arising therefrom.

(D) The provisions of this Clause 3 shall remain in effect notwithstanding the termination
or expiry of this Agreement until the settlement of all subsisting claims by the
Licensor.

4. Ownership of Marks

(A) The Licensee acknowledges that the Licensor is the sole and exclusive owner of the
Marks and of all associated intellectual property registrations and pending
registrations, as applicable, and the Licensee shall not at any time, whether during
the Term or after the termination of this Agreement, do anything inconsistent with
such ownership, nor use the Marks in any way which would cause the Marks to

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become generic, lose their distinctiveness or mislead the public, or may be
detrimental to, or inconsistent with, the goodwill, reputation or image of the Licensor.

(B) The Licensee shall not claim ownership rights to the Marks, or any derivative,
compilation, sequel or series, or related Marks owned by or used by the Licensor.
The Licensee agrees that nothing in this Agreement shall give the Licensee any right,
title, or interest in the Marks other than the right to use the same in accordance with
the terms of this Agreement. The Licensee agrees not to make similar derivatives of
the Marks. The Licensee admits the validity of all copyrights for the Marks and all
associated intellectual property registrations, and acknowledges that any and all
rights that might be acquired by the Licensee because of its use of the Mark shall
inure to the sole benefit of the Licensor.

(C) Subject to the Licence granted by the Licensor to the Licensee hereunder, the
Licensor shall retain any and all rights, titles and interests in and to the Marks. The
Licensor hereby reserves all rights that are not specifically and exclusively granted
to the Licensee hereunder.

(D) The Licensor shall have the right, but shall not be obligated, to obtain and maintain
any registration of the Marks.

5. Term and Termination

(A) This Agreement shall commence as of the Effective Date and shall continue in full
force and effect for a term of [one (1) year], after which it shall be automatically
renewed for further periods of [one (1) year each] (“Term”), unless the Licensor
gives a written notice to the Licensee, indicating its intention not to renew this
Agreement (“Notice of Non-Renewal”) at least [one (1) month] prior to the date on
which the existing one-year term would have expired.

(B) Notwithstanding Clause 5(A) above, in the event that:

(i) the Licensee sells all or substantially all of its assets to a third party;

(ii) the Licensee ceases to operate the Business;

(iii) the Licensee is adjudged bankrupt, or if a resolution is passed or a binding


order is made for the winding up of the Licensee;

(iv) the Licensee fails to perform or comply with its obligations under this
Agreement;

(v) a court appoints and assumes jurisdiction of the assets of the Licensee; or

(vi) a trustee or receiver is appointed by a court for the assets of the Licensee,

the Licensor shall have the right to immediately terminate this Agreement, without
prejudice to the rights and remedies of the Licensor in respect of the breach or
antecedent breach by the Licensee of any of its obligations under this Agreement.

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(C) Notwithstanding Clauses 5(A) above, the Licensor shall have a right at any time
during the Term to terminate this Agreement by providing the Licensee with [three
(3) months’] notice in writing.

(D) Upon termination or expiration of the Licence granted under this Agreement by
operation of law or otherwise, all rights, including the right to use the Marks,
privileges and obligations arising from this Agreement shall cease to exist.

6. Indemnification

The Licensee shall fully indemnify, defend, and hold harmless Licensor from and against any
and all claims, losses, damages, expenses, and liabilities, including without limitation, suits
arising from offering, promoting, advertising, sale, or use by the Licensee, or any of its
authorised sublicensees (if applicable), of the Marks, whether or not such use conforms to
standards set by the Licensor, provided that such claim, loss, damage, expense, or liability
does not arise from the negligence of the Licensor.

7. Infringement

(A) In the event that the Licensee becomes aware of any claimed or alleged
infringement of the Marks by a third party, the Licensee shall promptly advise the
Licensor in writing of the nature and extent of such infringement or dilution.

(B) The Licensor shall have no obligation to take any action whatsoever in the event
that any infringement or dilution occurs with respect to the Marks, but the Licensor
shall have the sole right to determine whether any action shall be taken (including
litigation, arbitration or otherwise) in respect of any infringement or alleged
infringement of the Marks or passing off or any other claim or counterclaim brought
or threatened in respect of the use of the Marks. In the event that the Licensor sues
or takes any other action, legal, equitable, administrative, or otherwise, to stop an
infringement or dilution of the Marks, the Licensee shall cooperate fully with the
Licensor.

(C) The Licensee shall have no right to enforce the Marks through litigation without prior
written authorisation of the Licensor. In any legal action arising from use, or
ownership rights of the Marks, where both the Licensor and the Licensee are co-
parties, the Licensor shall have the right to control the litigation, including any and
all settlement negotiations.

8. Inspection

The Licensee shall permit reasonable inspection by the Licensor or a designated third party to
ensure that the Licensee does not use the Marks in a manner inconsistent with the Licence
granted hereunder. The Licensee shall allow the Licensor (at all reasonable times), either
directly or indirectly through an independent contractor retained by the Licensor, to inspect the
Licensee’s premises, and Materials to confirm and assure the Licensor that the Licensee is
complying with its obligations under this Agreement.

9. Quality Control

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In order to preserve the inherent value of the Marks, the Licensee agrees to use reasonable
efforts to ensure that it maintains the quality of the Licensor’s business and the operation
thereof equal to the standards prevailing in the operation of the Licensor’s business as of the
date of this Agreement. The Licensor shall oversee the quality of the services provided under
the Marks and shall approve, prior to their use, all prospectuses, advertisements, and other
materials upon which the Licensee uses the Marks. The Licensee further agrees to use the
Marks in accordance with such quality standards as may be reasonably established by the
Licensor and communicated to the Licensee from time to time in writing, or as may be agreed
to by the Parties from time to time in writing. Commented [C&G4]: Section 150.1 of the
Intellectual Property Code (“IPC”) provides that
10. Taxes any license contract shall provide for effective
control by the licensor of the quality of the
Any Philippine taxes on all payments relating this Agreement shall be for the account of the goods or services of the licensee in connection
Licensor. with which the mark is used. If the license
contract does not provide for such quality
control, or if such quality control is not
11. Assignment effectively carried out, the license contract shall
not be valid.
This Agreement (including, without limitation, the Licence granted hereunder) is personal to the
Commented [C&G5]: This is a mandatory
Licensee and shall not be assigned or transferred by the Licensee, including, without limitation, provision under Section 88 of the IPC. As
by operation of law, except a prior written consent from the Licensor. Any attempt on the part discussed, the statutory taxpayer is still the
of the Licensee to assign, sub-license, or transfer the Licensee’s rights under this Agreement, Licensor, hence, this is not contradictory with
except as provided herein, shall be invalid and void and would be considered as a failure on Clause 3(b)(v) where the payment would just
the part of the Licensee to comply with its obligations for the purposes of Clause 5(B)(iv). The be made by the Licensee and in effect, the
amount receivable by the Licensor is grossed
Licensor shall have the right to assign and/or license its rights and obligations under this up.
Agreement and all its rights, titles and interests in the Marks without the consent of the
Licensee.

12. Notices

(A) Any notice, demand or request required or permitted to be given under the provisions
of this Agreement shall be in writing and delivered personally or by registered or
certified mail, return receipt requested, or via electronic mail, with postage prepaid
and addressed to the following persons and addresses, or to such other addresses
or persons as any Party may request by notice in writing to the other such Party:

Licensor:

Company : [/]

Address : [/]

Attn : [/]

Email : [/]

Licensee:

Company : [/]

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Address : [/]

Attn : [/]

(B) Any notice shall be effective upon receipt and shall be deemed to have been received:
(i) at the time of delivery, if delivered by hand, registered post or courier; or (ii) at the
time when receipt is acknowledged, if sent by email, provided that in each case, where
delivery occurs after 4:00pm (local time at the place of destination), the relevant notice
shall be deemed to have been received at 9:00am (local time at the place of
destination) on the next following Business Day.

13. Governing Law and Dispute Resolution


(A) This Agreement shall be construed, interpreted and enforced in accordance with the
laws of the Philippines.

(B) The Parties irrevocably agree that the courts of Pasig City, Philippines shall have the
exclusive jurisdiction to finally settle any dispute or claim that arises out of or in
connection with this Agreement or its subject matter or formation (including non-
contractual disputes or claims and any dispute between the Parties in relation to an
infringement or dilution with respect to the Marks). Commented [C&G6]: As discussed above, these
are mandatory provisons under Section 88 of
14. Miscellaneous the IPC.

(A) Any amendment to this Agreement shall be in writing and signed by, or on behalf of, Additionally, should the parties intend for the
arbitration clause found in the TLA to still
each Party.
govern, then under Section 88 of the IPC and
Rule 3.3 of the Voluntary Licensing Rules and
(B) The waiver by a Party of any right or remedy under this Agreement shall be in writing Regulations (Rules), the Procedure of Arbitration
and signed by the waiving Party to be effective. It shall apply only to the circumstances of the Arbitration Law of the Philippines or the
for which it is given and shall not prevent the waiving Party from subsequently relying Arbitration Rules of the United Nations
Commission on International Trade Law
on the relevant provision of this Agreement. For the purposes of this Clause 13.2, no
(UNCITRAL) or Rules of Conciliation and
delay or failure to exercise any right or remedy under this Agreement shall operate as Arbitration of the International Chamber of
a waiver of any such right or remedy or constitute an election to affirm this Agreement. Commerce (ICC) shall apply and the venue of
No single or partial exercise of any right or remedy under this Agreement by a Party arbitration shall be the Philippines or any
shall prevent any further exercise of that right or remedy or the exercise of any other neutral country. In effect, the provisions in the
TLA will have to be amended.
right or remedy under this Agreement. In any event, the rights and remedies under
this Agreement shall be cumulative and shall not exclude any other rights or remedies
provided by law or otherwise.

(C) Any consent given under this Agreement shall be in writing and signed by the party
giving the consent to be effective. It shall apply only to the circumstances for which it
is given and shall not prevent the consenting Party from subsequently relying on the
relevant provision of this Agreement.

(D) This Agreement shall be binding upon and enure for the benefit of the successors in
title of the Parties hereto.

(E) If any provision of this Agreement, or the application of such provision to any person
or circumstance shall be held invalid, unenforceable or illegal under the laws of any

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jurisdiction, the remainder of this Agreement, or the application of such provisions to
any other persons or circumstances, shall not be affected thereby.

(F) This Agreement (as may be amended from time to time pursuant to the terms hereof)
shall constitute the entire understanding between the Parties hereto concerning the
licence to use the Marks and supersede and replace any prior agreements and
negotiations related to the subject matter herein.

(G) This Agreement may be executed in any number of counterparts, each of which is an
original and which, together, have the same effect as if each Party had signed the
same document.

(H) A person who is not a Party to this Agreement shall have no right under the Contracts
(Rights of Third Parties) Act (Cap 53B) to enforce any term of this Agreement.

(I) Time shall be of the essence of this Agreement, both as regards any time, date or
period originally fixed or any time, date or period which may be extended by
agreement between the Parties.

IN WITNESS WHEREOF, the undersigned have executed this Agreement as of the date first above written.

LICENSOR LICENSEE

________________________________ ______________________________ Commented [C&G7]: Some notes on the


execution and effectivity of the TLA:
Authorised Signature Authorised Signature
1. The TLA, per our query with the DITTB, will
have to be notarized (thus the acknowledgment
on the succeeding page), and if executed
outside the Philippines, duly authenticated.

2. Violation of the mandatory and prohibited


provisions of the IPC and the Rules would mean
that the agreement is unenforceable, unless the
parties apply for an exemption from the
_________________________________ ______________________________ mandatory and prohibited provisions with the
Director of the Bureau in accordance with
For and on behalf of For and on behalf of Section 91 of the IPC and Rule 4 of the Rules.
[/] [/]
3. To ensure the validity of the TLA, Rule 21 of
the Rules provides that parties to an agreement
may request for a certification to the effect that
the agreement conforms with the prohibited
clauses and mandatory provisions of the IPC.
IPC may then advise the parties to correct the
TLA/insert provisions – with submission and
ACKNOWLEDGEMENT recording to follow.

Republic of the Philippines )


_________________________) S.S

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BEFORE ME, personally appeared:

Name Valid ID Date/Place Issued


(Representative of the Licensee) XXX XXX/XXX

Known to me and to me known to be the same person who executed the foregoin instrument and
acknowledged to me that the same is his/her free and voluntary act and deed and the voluntary act and
deed of the entity he/she represents, and that she is duly authorized for the purpose.

This document consisting of ___(__) pages, including the page this document is signed and notarized.

WITNESS MY HAND AND NOTARIAL SEAL, at the place and on the date first above written.

Notary Public

Doc. No.______;
Page No. ______;
Book No.______;
Series of 2017.

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Appendix A

Description of the Trademarks and Trade Names

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Appendix B

Description of the Brand Elements

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