It is not uncommon for a former licensee to want to continue using IP after the end of his licence, as does Murdoch Books. I hope that a letter of claim and some negotiations will resolve the situation. One issue I have acted on is the termination of a distribution contract. A distribution agreement usually includes a trademark license. In this case, the distributor had registered the licensed trademark as a domain name. The ex-distributor did not stop using the domain name and failed to cancel or hand over the domain name to the trademark holder. In Australia, the registrant of a domain name must sign a form to transfer the domain name, and if the ex-distributor is not disposed, this can be difficult. Croft J.A. indicated that the question of whether a right was conducted in such a way as to survive the termination is a matter of the construction of the contract in question. In this context, the words of the license were very important: “This license … in the long term, only the quality control rules contained in this system will be subject. This shows that the parties intended not to terminate the licence after their rescue, except in this case. As a result, the construction license survives at the end of the option. A well-prepared intellectual property license in favour of the licensee generally contains a provision allowing the donor to terminate the license in the event of a default on the licensee.
These provisions are particularly important for exclusive licenses, for which the taker is the sole source of revenue for the technology. This is all part of the detailed and painstaking work of a contractor. If a lawyer is responsible for the development of all the projects and the final version of the agreement, the commercial parties can leave that work to him. If the commercial parties choose to prepare projects without a lawyer, they must ensure that they take the same careful approach as their lawyer. It is, of course, important to seek the advice of an intellectual property lawyer at the outset when developing the agreement. In accepting the termination clauses, you should consider in advance the following points: in this case, the judge preferred the latter interpretation and concluded that an “indeterminate” licence would not necessarily last forever. If you want to create an endless license, explain how the issuance relates to a termination formula in the license and/or consider other formulations such as “irrevocable.” It may seem strange to argue that the consequences of a termination are one of the key conditions of an IP contract. This issue is rarely addressed in calendar sheets or in trade negotiations in the start-up phase. This is a welcome clarification for licensees that a termination provision resulting from the licensee`s insolvency is generally enforceable.
As a result, parties to long-term agreements generally have many permanent obligations. Some of these obligations (for example. B, research and development cooperation commitments) will end when the agreement expires. Other commitments may be maintained for a limited period of time (for example. B confidentiality obligations). However, other obligations may be maintained indefinitely (for example. B compensation obligations). In addition, there may be new obligations that will not come into effect until the termination, such as the obligation. B to cancel the registration of licenses with national patent offices or trademark registries.