Licensing & Agreements

A trademark is only as secure as the agreements around it.

 

Whether you're licensing a brand, appointing a Canadian distributor, or resolving a conflict with another rights holder, we draft and review agreements that protect your rights under Canadian law and support your commercial goals.

 

What we handle:

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• Trademark licence agreements, for licensors and licensees

• Distribution and supply agreements involving branded goods

• Assignments of trademarks and other IP rights

• Coexistence and consent agreements with other rights holders

• Non-disclosure and confidentiality agreements

• Review and negotiation of agreements prepared by the other side

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Getting the details right in Canada

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Agreements that work well elsewhere don't always protect a brand in Canada. A few issues come up again and again:

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• Control over licensed use. Under the Trademarks Act, use of a trademark by a licensee benefits the owner only if the owner controls the character or quality of the goods or services. A licence that doesn't establish that control can weaken the owner's rights, and the gap often surfaces at the worst time, such as in a section 45 proceeding or an opposition.

• Who owns the Canadian registration. When a foreign brand enters Canada through a local distributor, the agreement should be clear that the brand owner, not the distributor, owns the trademark and any Canadian applications or registrations. Disputes with former distributors are among the most common, and most avoidable, problems foreign brands face here.

• Registration before licensing. Licensing an unregistered mark is possible, but registering first gives both parties a clearer foundation and gives the owner stronger enforcement options.

• Quebec's language requirements. Quebec's language requirements can affect product packaging, signage, and certain contracts. If your goods or services will reach Quebec, we'll flag where the agreement needs to account for them.

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Frequently asked questions​

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Does a trademark licence need to be recorded in Canada?
No. Canada doesn't require licences to be recorded with CIPO. What matters is that the licence exists and that the owner actually controls the character or quality of the licensed goods or services.

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Should my Canadian distributor file the trademark application?
Generally, no. The brand owner should file in its own name. A distributor that holds the Canadian registration can make it difficult to change distributors or enforce the mark later.

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Can you review an agreement drafted under another country's law?
Yes. We regularly review foreign-drafted agreements and advise on the changes needed for them to work in Canada.

For advice on a Canadian licence or agreement, please get in touch.

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