A trademark licence contract does not have to be recorded with the Patent Office in order to be valid and effective. Even in the absence of recordal, the licensee still acquires the right to use the mark in accordance with the agreed terms. The recordal is important, however, because it is precisely from the date of recordal in the State Register of Marks that the contract becomes enforceable against third parties.

This recordal is beneficial both for the licensor and for the licensee, as it adds certainty and clarity to the legal relationship, especially in cases of a transfer of the mark or in situations requiring protection against infringers of the rights in the mark.

Advantages of Recordal for the Licensor and the Licensee

Trademarks are often registered in the name of natural persons, while their use is carried out through those persons' companies. In order to avoid the risk of losing the mark in the event of claims by creditors, it is common for the mark to be owned by one company and used under licence by another related company. In such a case, if a request is filed for revocation of the mark on the ground of non-use, the licensor will be able to prove that the mark has been used through the licensee.

The licensee also obtains additional rights upon recordal of the licence contract, as it will be able to defend its rights in the mark against third parties. In addition, recordal serves as protection against bad-faith conduct on the part of the licensor. If, for example, the licensor decides to transfer its rights in the mark, the licence contract will be protected, since after recordal the transfer cannot be carried out without the consent of the new proprietor.

Recordal Procedure at the Patent Office

Recordal may be requested by either party to the contract. An application in the prescribed form must be filed, accompanied by the following documents:

  • The original of the licence contract or a copy certified as “true to the original”
  • A power of attorney, if the documents are filed through an authorised representative
  • A document evidencing payment of the fee

It is good practice to submit only an extract from the licence contract, rather than the full text, in order to preserve the confidentiality of specific contractual terms. If the licence forms part of a broader contract, for example for franchising or agency, then only the clauses concerning the licence may be included in the extract.

Requirements for the Extract from the Contract

If an extract from the contract is submitted, it must include the following information:

  • The identification details of the licensor and the licensee
  • Details of the mark and the type of licence
  • The products or services for which the licence is granted
  • The term of the licence contract
Fees and Publication

A fee of BGN 60 is payable for recording the licence contract in the State Register of Marks. Where there is more than one licensee, a separate fee is due for each of them. After successful recordal, the trademark licence is published in the official bulletin of the Patent Office, which also informs third parties of the existence of the licence agreement.

If you need advice and assistance with drafting and recording a trademark licence contract, contact us on tel.: 0887550706 or by e-mail: [email protected]