Trademark Licence
THIS AGREEMENT made the / day of / 20BETWEEN:
THE WESTERN AUSTRALIAN AGRICULTURE AUTHORITY a body corporate under the Biosecurity and Agriculture Management Act 2007of 3 Baron-Hay Court, South Perth, Western Australia, Australia(“Authority”)
AND
[] [] of [] (“Licensee”).
RECITALS
- The Authority is the owner of the right, title, interest and goodwill in the trade mark set out in Item 1 of Schedule 1 (“Trade Mark”).
- The Authorityhas obtained protection in Australia under the Trade Marks Act 1995 (Cth) (“Act”) of the right, title, interest and goodwill in the Trade Mark and details of the Trade Mark registration are set out in Item 2 of Schedule 1.
- The Licensee desires to use the Trade Mark upon or in relation to the manufacture, production, provision or supply of Goods in Australia and/or overseas, and may wish to record its interest as an authorised user of the Trade Mark under s 113 of the Act.
- In consideration of the payments set out in this Agreement the Authority has authorised the Licensee to use the Trade Mark on the terms and conditions contained herein (“Licence”).
NOW THE PARTIES AGREE as follows:
Administration
1.The Licensee acknowledges and agrees with the Authority that the Department of Agriculture and Food Western Australia, or such other body or instrumentality which is charged with the administration of this Agreement on behalf of the Authority and given the ability to exercise the rights and perform the obligations of the Authority under this Agreement from time to time (“Department”) may:
(1)administer this Agreement;
(2)exercise the rights of the Authority under this Agreement; and
(3)perform the obligations of Authority under this Agreement,
and any such administration, exercise or performance by the Department will be deemed to be administration, exercise or performance by the Authority for the purposes of this Agreement.
Appointment of user
2.(1)Subject to the terms of this Agreement the Authority grants to the Licensee for the Term a non-exclusive, non-assignable licence to use the Trade Mark in Australia(the “Territory”) upon or in relation to the Goods as described in Item 3 of Schedule 1 (“Goods”).
(2)If the Licensee wishes to amend the list of Goods, it will submit to the Authority for consideration a revised Item 3 table, and the Authority will advise the Licensee whether it gives its consent to the amendment. The Authority's consent will not be unreasonably withheld.
(3)This Agreement shall commence on the date this Agreement is executed (“Execution Date”) and expire on the date 1 year after theExecution Date (“Term”), or such later time as may be agreed by the parties in writing prior to the date 1 year after the Execution Date.
Payments
3.In consideration of the Licence, the Licensee must, upon receipt of an invoice from the Authority, pay the Authority$257.57 in accordance with payment terms specified in that invoice (“Licence Fee”).
Promotion
4.(1)The Licensee agrees to use the Trade Mark solely in respect of the Goods, and to ensure that the Trade Mark appears in all catalogues and other promotional material relating to the Goods as described in Item 4 of Schedule 1.
(2)The Licensee must ensure that no advertising or promotional material produced in respect of the Goods contravenes the Competition and Consumer Act 2010 or similar legislation in any jurisdiction in the Territory or guidelines of the Australian Competition and Consumer Commission in relation to promotion of the Goods.
Registration of Licensee and Licensee’s other rights under the Act
5.The Authority may join with the Licensee in applying promptly after the execution of this Agreement to the Registrar of Trade Marks in Australia to record the Licensee’s interest as an authorised user of the Trade Mark in relation to the Goods.
Execution
6.The parties agree to execute all documents and do all acts and things required to give effect to this Agreement.
Quality control of goods/services
7.(1)The Licensee must not use the Trade Mark either by itself or as part of any other identification or name in relation to any goods or services other than the Goodsthat comply with clause 7(2) of this Agreement.
(2)The Licensee must ensure that the Goods are produced, prepared, packaged and sold in accordance withthe quality control conditions in Item 5 of Schedule 1, which may be amended from time to time by the Authority and in the Authority’s absolute discretion, and any other directions given by the Authority from time to time.
(3)The Licensee must permit any officer or agent of the Authority, who is authorised in writing for that purpose, to enter upon any premises of the Licensee during normal business hours (on 24 hours verbal or written notice), in order to inspect the circumstances of manufacture, production, provision or supply of the Goods and the use or application of the Trade Mark. The officer or agent is entitled to take samples and to carry out tests for the purpose of examination and testing for compliance with the terms and conditions of this Agreement.
No agency
8.The Licensee must not:
(a)in any manner describe itself or hold itself out as the agent of the Authority and the Authority can not be or become liable whatsoever in respect of the manufacture, production, provision or supply of the Goods entered into by the Licensee with any other party;
(b)grant any right, licence or authority to any third party whether at common law or otherwise to use the Trade Mark;
(c)use the Trade Mark without submitting to the Authoritya copy of the proposed marked Goods for its prior written consent and receiving such consent; or
(d)use the Authority’s name without the prior written consent of the Authority.
Title
9.(1)The Licensee acknowledges the Authority’s title to the Trade Mark in Australia, the validity of the Authority as the registered proprietor under the Actand undertakes not to take any action which would or might:
(a)invalidate or put in dispute the Authority’s title or rights;
(b)oppose any application for registration for the Trade Mark or invalidate any registration of the Trade Mark in due course;
(c)support an application to remove any Trade Mark as a registered Trade Mark;
(d)cause any Registrar of Trade Marks to require a disclaimer of a monopoly in any Trade Mark or part of one; or
(e)assist any other person directly or indirectly to take action resulting in any of the acts outlined in clause 9(1)(a) to (d).
(2)The Licensee undertakes not to apply, vary or cancel any record under the Act of its interest as an authorised user of any Trade Markin respect of the Goods without the express written authority of the Authority.
Similar marks
10.The Licensee shall not use in its business any other Trade Mark or logo which is similar to or substantially similar to or so nearly resembles the Trade Mark as to be likely to cause deception or confusion among the public.
Maintenance of value
11.The Licensee must use its best endeavours to preserve the value and validity of the Trade Mark and in particular must:
(1)endeavour to create, promote and retain the goodwill in its business relating to the manufacture, production, provision or supply of the Goods;
(2)use the Trade Mark in the manner appearing in Item 4 of Schedule 1;
(3)not use the Trade Mark accompanied by words describing the Goods unless the Trade Mark is distinguished from the descriptive surrounding and adjacent text.
Infringement proceedings
12.(1)The Licensee undertakes to the Authority that it will do all things reasonably necessary for the protection of the Trade Mark against deregistration or infringement.
(2)In the event that:
(a)the Licensee receives notice of any infringement or threatened infringement of the Trade Mark or any common law passing off by reason of imitations of get up or otherwise; or
(b)any third party alleges or claims that the Trade Mark is liable to cause deception or confusion to the public,the Licensee must notify the Authority immediatelygiving particulars, and provide all information and assistance to the Authority in the event that the Authority commences or defends proceedings in relation to the above claims or infringements. Any such proceedings will be under the control and at the expense of the Authority.
(3)In the event that the Authority does not commence or defend proceedings in relation to claims or infringements of the Trade Mark within two (2) months of receiving notification of them from the Licensee, the Licensee may institute proceedings in its own name as if it were the Authority (joining the Authority as a plaintiff) and the Authority is not liable for any cost unless it takes part in the proceedings.
Indemnity
13.The Licensee must at all times keep the Authority, its employees, agentsand contractors, indemnified from and against all claims, demands, actions, proceedings and prosecutions which may be brought, commenced or prosecuted against the Authority, its employees, contractors or agents or in which the Authority, its employees, contractors or agents may be involved in consequence of or relating to the manufacture, production, provision or supply of the Goods by the Licensee. The indemnity will extend to all costs, damages and expenses incurred by the Authority, its employees, agents and contractors.
14.The Licensee acknowledges and agrees that:
(a)this Licence does not authorise the Licensee to use the Trade Mark in any country other than Australia; and
(b)any use of the Trade Mark by the Licensee in any country other than Australia shall be entirely at the risk of the Licensee and the Authority shall not be liable for any resulting loss or damage from such unauthorised use.
Termination
15.1Without prejudice to any right or remedy which the Authority may have against the Licensee for breach of this Agreement, the Authority has the right to terminate or suspend the Licence and this Agreement at any time by notice to the Licensee:
(a)if an insolvency event occurs where:
(i)the Licensee ceases to (or is unable to) pay its creditors (or any class of them) in the ordinary course of business, or announces its intention to do so;
(ii)a receiver, receiver and manager, administrator, liquidator or similar officer is appointed to the Licensee or any of its assets;
(iii)the Licensee enters into, or resolves to, enter into, a scheme or arrangement, compromise or composition with any class of creditors;
(iv)a resolution is passed or an application to a court is taken for the winding up, dissolution, official management or administration of the Licensee;
(v)if any liquidator, receiver or manager enters into possession of any of the assets of the Licensee;
(vi)anything having a substantially similar effect to any of the events specified above happens under the law of any applicable jurisdiction;
(b)if the Licensee commits a breach of any of the provisions of this Agreement and does not remedy the breach within a period of thirty (30) days after receiving notice from the Authority specifying the nature of the default;
(c)if the Licensee commits a breach of any of the provisions of this Agreement which in the reasonable opinion of the Authority is not capable of remedy; or
(d)if in the reasonable opinion of the Authority, the reputation of the Authority is, or is likely to be, damaged by any act of omission of the Licensee.
15.2Where the Authority suspends the Licence, it may reinstate it at such time as it considers appropriate in its absolute discretion.
15.3Where the Authority terminates the Licence, there will be no reinstatement of it and the Licensee shall have no right to the return of any portion of the Licence Fee.
Notices
16.Subject to clause 16(3), notices must be in writing, in English, and may be given by an authorised representative of the sender.
(1)A notice may only be given to a party:
(a)personally;
(b)by sending it by pre-paid mail to the party’s address last notified;
(c)by sending it by facsimile to the party’s facsimile number last notified and then confirming it by pre-paid mail to the party’s address last notified,and may not be delivered by an electronic transaction (other than a facsimile).
(2)A notice is deemed to be received by a party:
(a)if sent by pre-paid mail, three (3) Business Days after posting;
(b)if sent by facsimile and confirmed by pre-paid mail, at the time and on the day shown in the sender’s transmission report, if it shows that the whole notice was sent to the person’s facsimile number last notified.
If the notice is deemed to be received on a day which is not a Business Day or after 5p.m., it is deemed to be received at 9a.m. on the next Business Day.
(3)If two or more people comprise a party, notice to one is effective notice to all.
(4)All notices under this Agreement must be sent to the contact details specified in Item 6 of Schedule 1. These contact details may be changed from time to time, provided the party changing its details provides written notice of such change to the other party at least five (5) Business Days before the change becomes effective.
(5)For the purposes of this clause “Business Day” means any day other than a Saturday, Sunday, or public holiday in the state of Western Australia.
Applicable law
17.This Agreement is governed by the laws of the State of Western Australia and the parties submit to the non-exclusive jurisdiction of the courts of that State.
GST
18.(1)In this clause 18:
(a)GST Act means A New Tax System (Goods and Services Tax) Act 1999 (Cth), and where the context permits, includes the Commissioner of Taxation’s goods and services tax rulings and determinations and any other written law dealing with GST applying for the time being in the State of Western Australia;
(b)Additional Amount, Recipient and Supplier have the meanings given in clause 18(3);
(c)Any terms used in this clause 18 that are defined in the GST Act have the same meanings as in the GST Act.
(2)All prices or other amounts fixed or determined under, or referred to in, this Agreement are exclusive of GST, except where expressly provided to the contrary in a particular provision of this Agreement.
(3)Subject to clause 18(4), if GST is or becomes payable by a Party (“Supplier”) in relation to any supply that it makes under, in connection with or resulting from this Agreement, the Parties agree that, in addition to any consideration provided by a Party (“Recipient”) for that supply, the Recipient must pay to the Supplier the amount of any GST for which the Supplier is liable in relation to that supply (“Additional Amount”) at the same time as the relevant consideration or any part of it is provided.
(4)The obligation to pay the Additional Amount only arises once the Supplier has issued a tax invoice (and adjustment note) to the Recipient in respect of the Additional Amount.
(5)If, under this Agreement, one Party is required to pay an amount to reimburse or compensate the other Party for any cost or liability incurred by that Party, the amount to be reimbursed or compensated excludes any GST component of that cost or liability for which that other Party is entitled to claim an input tax credit.
Charges
19.All stamp duties and governmental charges arising out of or incidental to this Agreement are the responsibility of and must be paid by the Licensee.
Assignment
20.The Licensee must not assign all or any of its rights in this Agreement without the prior written consent of the Authority.
Amendments
21.This Agreement may not be varied except in writing signed by all of the parties.
Severability
22.If any provision of this Agreement is held by a court to be unlawful, invalid, unenforceable or in conflict with any rule of law, statute, ordinance or regulation it is to be severed so that the validity and enforceability of remaining provisions are not affected.
Entire agreement
23.This Agreement records the entire agreement between the parties and replaces all representations, warranties or proposals not embodied herein.
Counterparts
24.This Agreement may be executed by the parties in counterpart. Each counterpart shall constitute a binding agreement once both parties have executed.
SCHEDULE 1
ITEM 1 – TRADEMARK
ITEM 2 –TRADEMARK REGISTRATION DETAILS
The Trade Mark Australian registration details are as follows:
Trade Mark Owner / Trade Mark / Registration number / Commencementdate / ClassesWestern Australian Agriculture Authority / Refer to Item 1 / 1205629 / 19 October 2007 / 29,30,31,32,33 and 41
ITEM 3 – GOODS
Product name / Product description / WA characterising ingredient(s) / Other relevant informationITEM 4 – USE OF TRADEMARK
This must appear in full as set out in Item 1 of Schedule 1 in all material, promotions, packaging and information whatsoever relating to the Goods. The Trade Mark must be applied either in black and white or the colour Pantone 361 and it may be altered in size to suit packaging or other marketing requirements. However, the Trade Mark must not be altered in terms of graphic proportions relating to the design.
ITEM 5 – QUALITY CONTROL
The Licensee agrees to:
(a)ensure that the Goods meet the following criteria:
(i)for fresh Goods, the product must be grown, farmed or fished in Western Australia; and
(ii)for processed Goods (all of the following apply):
A.all Characterising Ingredients must be grown, farmed or fished in Western Australia; and
B.the Goods must be transformed and/or processed in Western Australia
(b)ensure the Licensee complies with the Australia New Zealand Food Standards Code;
(c)ensure that the Licensee has in place quality assurance procedures and protocols in relation to the Goods as approved in advance in writing by the ,Authority unless otherwise agreed in writing by the Authority; and
(d)comply with all other reasonable directions given by the Authority from time to time in relation to the use of the Trade Mark by the Licensee.
For the purposes of Item 5, the words below are defined as follows:
Australia New Zealand Food Standards Code has the same meaning as in Health (ANZ Food Standards Code Adoption) Regulations 2001.
Characterising Ingredients has the meaning given to the term in Standard 1.2.10 of the Australia New Zealand Food Standards Code.
ITEM 6 – CONTACT DETAILS
For the Authority:Patricia Elphinstone
Food Integrity Manager
Department of Agriculture and Food,Western Australia
Locked Bag 4
Bentley Delivery Centre WA 6983