TG-STS 11/5/2Progress Merchandising (22.11.2013)page 1

______

Agenda Item:5

Subject:ProgressMerchandising / Licensing

Document Nr.TG-STS11/5/2

Date:22November 2013

Submitted by:Secretariat

______

Objective

To inform about the legal background and requirements for Merchandising/Licensing

Background

At the last TG-STS10 meeting in Bremen, the meeting mandated the secretariat within PROWAD with the implementation of a merchandising program by getting legal advice how to handle licensing in the different countries.The legal aspects of licensing of trademark rights are essential for a merchandising and cannot be ignored, since there are varied sources of errors like misuse not in line with values and dilution of the brand.

The secretariat contacted the law firms recommended as following:

LICHTE Rechtsanwälte, Hamburg Nordsee online Shop

Appelhagen Partnerschaft, Braunschweig Andreas Mack

PREU BOHLIG & Partner, Hamburg WWF

The Legal Group, AmsterdamSjon de Haan

The secretariat contracted Dr. Oliver Scherenberg from PREU BOHLIG & Partner based on his experience in the work for a complex NGO surrounding and his contacts to partner law firms in the Netherlands and Denmark.

Legal and fiscal implication of merchandising

There is a need for an early collaboration between the secretariat (as titleholder of the brand) and a legal advisor because trademark use can besubject to great risk without legal advice as each case is unique unto itself and is very fact-specific.

Outsourcing of legal advice on the brand to PREU BOHLIG & Partner

The use of the brand/ trademark for “non-commercialuse” as well as for licensing of commercial products can only be controlled by a licensing procedure or permitand by using defined fixed guidelines to maintain consistency.

trademark license agreement for commercial products within the WH Merchandise

Licences Grant with guidelines for non-commercial use

The income from merchandising can be handled by the CWSS. Due to the legal status “juristische Person öffentlichenRechts” the secretariat is allowed to generate income through merchandising and will be taxed when the income exceeds € 35.000.

The trademark license agreement will be issued under the German law as the secretariat is based in Germany. Within EU member states, the trade mark law in each jurisdiction is more or less equivalent as the trade mark law within the EU is harmonized.

Assessment

The investigation around the use of the World Heritage brand has shown that the definition of the brand (brand paper), communication and marketing of the brand, application of the brand in a commercial context, and use of the brand by entrepreneurs require a more systematic approach based on a comprehensive brand strategy.

It is also required to build a legal framework around a brand, the structure of a deal, strategies for monitoring and protection of the brands and how to avoid conflicts and pitfalls arising from a contract.

WH licensing will become a project of large scale which needs a management within planning, organizing, directing and controlling, and needs to part of the brand strategy.

Next steps

  • Creating a sample trademark license agreement for commercial products in the framework of merchandising.
  • Forming an expert groupwhich will serve to find commercially viable products, make recommendations and assist in the preparation of a call of interest to existing merchandise partners as appropriate.

Proposal

The meeting is proposed to note the legal requirements and approve the next steps for its implementation.