To have a trademark licence registered, you essentially need three things: the details of the trademark proprietor and the licensee, a clear identification of the mark and its registration number, and an indication of what the licence covers precisely — the entire mark or only certain classes, the entire territory or part of it. In addition, both the BOIP and EUIPO require some form of evidence that the licence exists, usually in the form of the licence agreement or an extract from it.
The detail most often overlooked in this context lies in that last point. A licence agreement typically contains commercial terms — royalty percentages, exclusivity, duration, termination conditions — that a business does not want to appear in a public register. The register does not automatically require the full agreement; often a declaration or extract stating only what is relevant for registration suffices. Those unaware of this sometimes submit the entire contract when it was unnecessary.
What appears in the application in practice
An application for registration of a licence contains in practice: the identity of the trademark proprietor as it appears in the register, the identity of the licensee, the mark and the registration number to which the licence relates, and its scope. That scope is where most attention should be directed: is it an exclusive or non-exclusive licence, does it apply to all goods and services in the registration or only some, and does it apply to the entire Benelux or EU territory or to a limited territory. Uncertainty on this point leads to questions from the register and delays the registration.
When the application is filed in the name of the trademark proprietor by someone other than the proprietor themselves, a power of attorney is usually added. This is a separate point of attention, because marcai.eu itself is not a representative and therefore does not hold a power of attorney on behalf of the client — the filing remains with the client themselves, via their own account with the BOIP or EUIPO. Anyone who needs someone to sign and file the application on their behalf will need to engage a trademark representative.
Why registration is not mandatory, but is prudent
A licence exists as an agreement between the trademark proprietor and the licensee, even without being entered in the register. Maintaining the register is therefore not a condition for the licence to be valid between the parties who concluded it. Where registration does make a difference is in the relationship with third parties: an unregistered licence is not visible in the public register to outsiders — for instance, a party wishing to acquire the mark later, or a third party against whom action is taken. Supervisory authorities and registers describe this as a matter of enforceability, not validity; what that means in a given case is something a lawyer or trademark representative must examine.
This is also why it can be sensible to check, before a licence is concluded, whether the mark itself is still correctly and currently recorded in the register. In a few questions check how a mark appears in the register provides a first indication of this, even before a licence agreement is drawn up.
Benelux versus EU: minor differences in implementation
The BOIP and the EUIPO work from comparable principles, but the forms and the precise data requested differ. For a Union mark, a licence can for instance be limited to one or more Member States, whereas a Benelux mark by definition covers the entire Benelux territory. Anyone who has registered a mark in both registers must therefore possibly register the licence twice, each time with its own set of data. have us determine which route suits your mark per situation gives a first picture of this, before the licence agreement is drawn up.
What if the licence changes or ends
A licence that changes — a different term, a different scope — or ends must be reported to the register again. Failing to do so leaves an outdated licence in the public register, which can lead to unclear situations in a later transfer of the mark or in negotiations with a buyer. This is one of the points that falls under the monitoring category: not only the mark itself must remain current, but also the rights that rest upon it. On the frequently asked questions page a number of comparable situations are worked out, and what a service fee per registration costs gives an image of the costs associated with these kinds of additional registrations, separate from the fees paid directly to the BOIP or EUIPO.
Are you uncertain whether a licence for your mark belongs in the register, or would you first like to see how your mark currently stands? The free mark check gives a first indication, and the knowledge base on marcai.eu covers the rest of the practice around filing, monitoring and renewal.