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KENFOX IP & Law Office > Related Matters in Vietnam  > Trademark Licensing  > Preamble or “Whereas ” clause

Preamble or “Whereas ” clause

Posted by KENFOX IP
in Trademark Licensing

1) Importance of the section/part “Preamble”: “Preamble” consists of the essential part of the contract or the License agreement. Therefore, this section should not be neglected in a license agreement/contracts.

 

2) Essential points of the section/part of “Preamble”:

a.Outline of the objective technologies which Licensor is granting to Licensee.

b.Expression of the Licensor’s ownership or the Licensor’s possession granting the sublicense regarding the objective technologies to be granted to Licensee.

c.Attainment level of the objective technologies or the commercialized level of the technologies.

d.Declaration of the Licensee’s explicit expression to get the license.

e.Outline of the scope of the licensed technologies, more details should be cleared In the attachment.

f.The past relationship between the parties of the License agreement, Licensor and Licensee.

g.The details which the parties reached the agreement.

 

3) Function of the section/part of “Preamble”:

a.”Preamble” works as the basic element of ‘estoppel’, then the expression of. “Preamble” should not conflict with the fact.

b.If the terms & conditions are vague and their purposes are ambiguous meaning, “Preamble” supports to supplement the Interpretation.

 

Examples:

Example 1-1: Patent and Know-How License Agreement

THIS AGREEMENT made this … day of…, by and between Corporation organized and existing under the laws of… having principal place of business at… (herein-after referred to as “Company” ) and …, a corporation organized and existing under the laws of…, having principal place of business at …  (hereinafter referred to as “Licensee”)

WTITNESSETH:

WHEREAS, Company, through research and development for long years, acquires and possesses certain valuable know-how pertaining to a … composite and a method for making said composite and continues to develop scientific techniques pertaining to such composite, WHEREAS, Company owns and controls certain rights and trademark rights in…, and WHEREAS, Licensee desires to manufacture, use and sell said composite in certain countries hereinafter defined under a license from Company, NOW, THEREFORE, it is agreed as follows:

Example 1-2: License Agreement

This Agreement made and entered into this… day of ….20…. by and between ABC Corporation, a UK corporation with its principal office at… (hereinafter referred to as ABC) and XYZ Co., Ltd., an American corporation with its principal office at …, (hereinafter referred to as XYZ),

WITHNESSETH THAT:

WHEREAS, ABC has long been engaged in the manufacture and sale of … herein after referred to as the Licensed Products) under certain trademarks in the UK;

WHEREAS, ABC has acquired and possesses certain patents and valuable technical relating to the manufacture of the Licensed Products and has the right to grant license under said patents and utilizing technical;

WHEREAS, ABC has the right to grant license under said trade- marks to be used in connection with the Licensed Products;

WHEREAS, XYZ is desirous of obtaining, and ABC is willing to grant, the right and license to manufacture, have manufactured, use and sell the Licensed Products under said patents and utilizing technical, and to use said trademarks, and ABC is willing to furnish XYZ with all of said technical now, therefore, in consideration of premises and covenants hereinafter set forth, the parties hereto agree as follows:

Example 1-3: Computer Soft License Agreement

THIS LICENSE AGREEMENT, made and entered into this day, … by and between … a corporation, with principal place of business at…  (hereinafter called “Company”) and … a corporation, with principal place of business at …,(hereinafter called “Licensee”).

WITNESSETH:

WHEREAS, Company is engaged in the business of developing, promoting, and licensing computer program systems uniquely designed so as to be applicable to and highly desirable by… and … owners and operators, and is possessed of valuable experience gained therefrom;

WHEREAS, Company is a controlled subsidiary of… and has rights to the use of the trademarks and tradenames…, which are used in identifying and distinguishing computer program systems unique to the … and… industry;

WHEREAS, Company is the owner and user of the trademarks and tradenames …………which are used In Identifying and distinguishing computer program systems of high quality and unique to the … and … industry;

WHEREAS, Company has previously entered into a worldwide non-exclusive marketing agreement with … whereby … will exert efforts to sub-license and market the systems worldwide business which is of a primary Importance to Company;

WHEREAS, Licensee has agreed to provide implementation and ongoing support of any of such systems sold or sublicensed by … or others in Its territory on an individually constructed basis, and

WHEREAS, Licensee has agreed to support and aid any such marketing effort by … within Its territory and to refrain from any acts which would be incompatible with such effort or the previously mentioned agreement between … and Company:

and

WHEREAS, Licensee desires to acquire a non: exclusive license from Company, under certain provisions and restrictions herein- after provided, to use said trademarks and tradenames in connection with the advertising, promotion, and sale of computer program systems owned by Company or its parent corporation which are unique to the …  and… industry; and

WHEREAS, Company is willing to grant Licensee a limited license pursuant to the specific provisions and restrictions hereinafter provided;

NOW THEREFORE, in consideration of the mutual covenants herein contained, it is agreed by and between the parties.