How to Licence Your Australian Brand Overseas

In Short

• Licensing your brand overseas allows expansion without establishing operations abroad, leveraging local partners’ market expertise and distribution networks.
• Protecting your intellectual property (IP) internationally is crucial. Register your trade marks and patents in target markets and consider using international treaties like the Madrid System.
• A well-drafted licence agreement should cover exclusivity, branding control, confidentiality, dispute resolution, and termination terms to safeguard your business interests.

Tips for Businesses

Before licensing your brand internationally, ensure you own the relevant trade marks or patents. Choose a trustworthy licensee who aligns with your business values. Clearly define rights and responsibilities in a detailed licence agreement, covering exclusivity, branding, and termination clauses. Seeking legal advice can help avoid costly disputes and protect your brand.

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Table of Contents

• Commercial Benefits of Brand Expansion
• Protecting Your IP Internationally
• Licence Agreement
• Key Takeaways
• Frequently Asked Questions

If you plan to expand your brand internationally, you will likely use an intellectual property licence to gain global exposure while maintaining control. Australian companies often keep their manufacturing and selling rights in Australia while licensing overseas partners to commercialise, manufacture, and sell their products abroad. This approach enables growth across borders without the need to establish operations overseas. This article explores what this process involves and the benefits of such a partnership.

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Commercial Benefits of Brand Expansion

Once you have established your business and your branding, a key growth step is to expand your brand. Your branding is how consumers and clients will recognise your business. To be able to license your brand, you must first register your trade mark, patent and/or design with IP Australia. If you have growth plans, commercialising your brand can help you accelerate your growth milestones. 

There are a few ways that you can expand your brand. A licence agreement is one of the main methods of commercialisation in an international market. This agreement allows you to grant overseas businesses the right to use your branding, effectively ‘testing the waters’ in an overseas market without you having to commit to establishing your business overseas. So, for example, if you run an IT service provider business, you can license your IP to an overseas business in the US, allowing the US business to provide IT services under your brand to overseas clients.

Licensing your IP to trusted partners internationally allows you to leverage their market expertise and distribution networks. This is a cost-effective way to expand your brand without establishing a direct presence in regions or countries of interest to you.

Protecting Your IP Internationally

Before licensing your IP, it is crucial to research the laws and regulations of the region or country you intend to target. This includes understanding the types of IP protection available (patents, trade marks, designs etc.). You must also know the specific requirements for registration and enforcement, as this will differ for each jurisdiction. Researching local laws may help you identify potential challenges to protecting your IP in your target market and avoid potential pitfalls.

To effectively protect your IP in a foreign market, you must register in each region or country to ensure you have enforceable legal rights against infringement or unauthorised use. When considering international registration, you should consider utilising international treaties such as the Madrid System for trade mark registration or the Patent Cooperation Treaty for international patent applications. These treaties help streamline the registration process and can often be the more cost-effective approach for your business.

Licence Agreement

Step 1: Identify Your Goals for Expansion

The first step is to determine what your expansion plans are. Who will manufacture and develop your products? You may want to allow the potential licensee to have exclusivity to sell to specific regions and bear responsibility for the manufacturing and or selling of your goods or services. For example, consider:

• what will happen with research and development on new products and ranges;
• how do you want the licensee to build and promote your brand;
• how much control do you want over the end product; and
• what kind of commission will the licensee receive?

Step 2: Find Your Licensee

Licensing the rights to your brand or product overseas requires you to trust that the other party will act in your business’ best interests. You then want to ensure that the other party reflects your brand’s values and wants to assist in commercialising your business. Therefore, when looking for a licensee, you should take the time to communicate the purpose and goal of your commercial relationships effectively.

Step 3: Negotiate Your Agreement

Once you have identified the eligible licensee, you will negotiate a contract that addresses both parties’ needs. For example, you may want the licensee to sign a confidentiality agreement and draft a heads of agreement during the negotiation.

The licence agreement must address:

• the country to which you grant the licence;
• the term of the agreement;
• whether the licensee has exclusivity; 
• right of inspections;
• the IP to be licensed (i.e. trade mark, design registrations, patents, trade secrets, raw materials, promotion materials, customers lists, production specifications, market research, etc.);
• confidentiality; and
• termination and dispute resolution for a breach.

Key Takeaways

If you have an established Australian brand and want to limit the risks associated with overseas expansion, you should consider taking on a licensee. As the licensor, you can retain a portion of licence fees and see your brand thrive internationally. However, you should also weigh these advantages against the potential disadvantages, such as entering an unsuccessful relationship.

If you need help licensing your Australian brand overseas, our experienced IP lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page. 

Frequently Asked Questions