Publication 835: Article 2
Article 2
Request for Recordal of a License
(1) [ Contents of the Request for Recordal] Where the law of a Member State provides for the recordal of a license with its Office, that Member State may require that the request for recordal contain some or all of the following indications or elements:
(i) the name and address of the holder;
(ii) where the holder has a representative, the name and address of that representative;
(iii) where the holder has an address for service, such address;
(iv) the name and address of the licensee;
(v) where the licensee has a representative, the name and address of that representative;
(vi) where the licensee has an address for service, such address;
(vii) the name of a State of which the licensee is a national if he is a national of any State, the name of a State in which the licensee has his domicile, if any, and the name of a State in which the licensee has a real and effective industrial or commercial establishment, if any;
(viii) where the holder or the licensee is a legal entity, the legal nature of that legal entity and the State, and, where applicable, the territorial unit within that State, under the law of which the said legal entity has been organized;
(ix) the registration number of the mark which is the subject of the license;
(x) the names of the goods and/or services for which the license is granted, grouped according to the classes of the Nice Classification, each group preceded by the number of the class of that Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification;
(xi) where applicable, that the license is an exclusive license, a non-exclusive license, or a sole license;
(xii) where applicable, that the license concerns only a part of the territory covered by the registration, together with an explicit indication of that part of the territory;
(xiii) the time period of the license;
(xiv) a signature as specified in paragraph (2).
(2) [ Signature] (a) A Member State shall accept the signature of the holder or his representative, whether or not it is accompanied by the signature of the licensee or his representative.
(b) A Member State shall also accept the signature of the licensee or his representative, even if it is not accompanied by the signature of the holder or his representative, provided that it is accompanied by one of the following:
(i) an extract of the license contract indicating the parties and the rights being licensed, certified by a notary public or any other competent public authority as being a true extract of the contract;
(ii) an uncertified statement of license, drawn up in the form and with the content as prescribed in the statement of license Form provided for in the Annex to these provisions, and signed by both the holder or his representative and the licensee or his representative.
(3) [ Presentation of the Request] As regards the requirements concerning the presentation of the request, no Member State shall refuse the request where the presentation and arrangement of indications and elements in the request correspond to the presentation and arrangement of indications and elements in the request Form provided for in the Annex to these provisions.
(4) [ Language; Translation] (a) A Member State may require that the request be in the language, or in one of the languages, admitted by the Office.
(b) A Member State may require that, if the document referred to in paragraph (2)(b)(i) or (ii) is not in the language, or in one of the languages, admitted by the Office, the request be accompanied by a certified translation of the required document in the language, or in one of the languages, admitted by the Office.
(5) [ Fees] Any Member State may require that, in respect of the recordal of a license, a fee be paid to the Office.
(6) [ Single Request Relating to Several Registrations] A single request shall be sufficient even where the license relates to more than one registration, provided that the registration numbers of all registrations concerned are indicated in the request, the holder and the licensee are the same for all registrations, and the request indicates the scope of the license in accordance with paragraph (1) with respect to all registrations.
(7) [ Prohibition of Other Requirements] No Member State may demand that requirements other than those referred to in paragraphs (1) to (6) be complied with in respect of the recordal of a license with its Office. In particular, the following may not be required:
(i) the furnishing of the registration certificate of the mark which is the subject of the license;
(ii) the furnishing of the license contract or a translation of it;
(iii) an indication of the financial terms of the license contract.
(8) [ Request Relating to Applications] Paragraphs (1) to (7) shall apply, mutatis mutandis, to requests for recordal of a license for an application, where the applicable law of a Member State provides for such recordal.
