Due to the different needs that exist, both economic and business, in the commercial and industrial sector, trademark protection has been increasing considerably over time.
This is due to the fact that trademarks have positioned themselves and have become known in the different markets according to the products or services they represent, and the owners of these can grant the use of the trademark to a third party through a license.
In Guatemala, the license to use a trademark was regulated for the first time in the Central American Agreement for the Protection of Industrial Property (Approved by Decree 26-73 of the Congress of the Republic).
Subsequently, the Industrial Property Law (Decree 57-2000) came into force on November 1, 2000, and this law is the applicable industrial property law in our country.
The trademark license agreement is a legal bond by which the trademark owner or applicant, voluntarily and without losing its rights over the trademark, grants to another person the right to carry out, according to the conditions stipulated in said agreement and without being the owner of the trademark, forms of exploitation of the trademark, which in the absence of such consent could be prohibited.
THE PARTIES TO THE CONTRACT
It is the person who owns the registered trademark or the applicant for registration, as the case may be, or a person who owns a right over the trademark, entitled to grant licenses.
It is the person who acquires the right to exploit a trademark granted in his favor by means of a contract, without being classified as the owner of the registration and within the conditions and limitations established in said contract.
The primary function of the license of use contract is that the rights acquired by the licensee will have a commercial purpose, such rights will allow the licensee to place on the market goods and services identified with the licensed trademark.
It should also be taken into account that, due to the functions of trademark licenses, these will normally be intended to be used for business purposes with the objective of profit on the part of the holders.
Our legislation, specifically the Industrial Property Law, regulates the formalities that must be included in the document where the license agreement is executed, being the following:
- Written document (private or public deed)
- If granted in a language other than Spanish, the document must be duly legalized and have a sworn translation (applies to private documents).
Although it is true that such regulation does not require the registration of the trademark license agreement in the Intellectual Property Registry of Guatemala, it is highly recommended that such agreement be registered, since having the support of the registration will be effective against third parties according to the conditions established therein and will also serve as a support to both parties.
In order to register the trademark license agreement in the Guatemalan Intellectual Property Registry, it must contain the following requirements:
- The name, company name or denomination of the owner and the licensee and their domicile;
- The trademark or trademarks that are the object of the license and indication of their registrations;
- The term of the license, if any;
- Indication of whether the license is exclusive or not and any agreed conditions, covenants or restrictions on the use of the trademark; and
- e) Summary of quality control provisions.
- It is important to take into consideration that the document, whether private or in public deed, must express the rights granted to the licensee, for example: to produce, use, commercialize, sell, or a combination of the above; and whether these are for consideration or free of charge.
- The category of the license in question must be specified: whether or not it covers all the goods or services for which the trademark is registered.
- Quality control is an extremely important aspect derived from the fact that the trademark is the one that represents the products or services covered by the trademark. Having said this, it is advisable to establish in the contract the obligation for the licensee to comply with the licensor's quality standards.
- Undoubtedly, one of the aspects that must be taken with utmost importance is the remuneration agreed in the contract. Therefore, it is necessary to regulate the periods or form of payment in which such remuneration must be paid and the consequences when it has not been paid within the agreed period.
- And finally, the trademark license agreement must strictly stipulate a term. Such term will be valid until the licensee will have all the rights granted in the contract.