Trademark Licensing in India
The trademark licensing is the action or instance of authorizing another person or company for making business usage of any registered trademark for the specified period of time and as per the mutually agreed terms and conditions, by the owner of the trademark. The owner of the registered trademark then derives royalty from the licensee for the agreed commercial uses of the trademark. Here, it must be noted that, only some rights related with a registered trademark are given to the licensee, and the exclusive ownership over the licensed trademark and many vital and critical rights associated with the trademark rest with the registered owner of the trademark. This legal webpage offers very informative and useful information about the trademark licensing in india and our expert and brisk services for this, to help Indian and foreign companies and firms located in places all across India.
The Section 49 of the Indian Trade Marks Act of 1999 deals exclusively with licensing of trademarks and service marks in India. The last sub-heading of this webpage contains very beneficial information regarding "how to license a trademark in india?" for doing business in any economic field. Here, it is important to mention that, licensing of trademarks is usually based on certain agreed terms and conditions related with the quality standards of the concerned product, maintenance of the established reputation of the associated product and trademark, exclusiveness of the same, the ways the trademark may be used, etc. Again, licensing is undertaken for a specified period of time, say, several years or decades. The Indian Trademarks Act has not prescribed any statutory terms or tenure for licensing of trademarks in India.
What is the Difference between Licensing and Assignment of Trademarks?
Both the licensing and assignment of trademark are means of exploiting the registered trademark (or service mark) commercially and/or financially. However, there are many critical differences between these two; the following answer the question "what is the difference between licensing and assignment of trademarks?", to provide elucidation on this topic:
- Licensing of trademark is basically a time-bound agreement which authorizes another person/company for making use of the concerned trademark and many rights related thereto, mainly for the purpose of deriving regular royalties from the licensee or authorized user. On the other hand, the assignment of trademark (stipulated in Section 37 of the Indian Trademarks Act of 1999) is selling permanently the exclusive ownership over the registered trademark together with all legal rights attached to it, to another person or company.
- The assignment deed is mandatory in written, whereas a licensing may not require an agreement in written form.
- Keeping a record of a licensing of trademark with the registrar, is not compulsory. But in case of the assignment of trademark, this must be recorded with the trademark registry.
- Licensing is usually for a limited period of time. While the assignment of trademark is generally perpetual.
- In licensing of trademark, only some rights are given to the licensee, and that too under certain mutually agreed terms and conditions. Whereas, in case of the assignment of trademark, all exclusive rights related with a registered trademark are handed over to the new owner forever.
How to License a Trademark in India?
The Section 49 of the Indian Trade Marks Act of 1999 describes the procedure for licensing a registered trademark in India. Again, though providing information about any such licensing of trademark to the concerned Registrar of Trade Marks is not compulsory, recording this with the Registrar is often very securing and beneficial both to the proprietor and the licensee. For example, the licensee or the registered user of the trademark is then fully enabled to initiate any legal proceedings independently in future, in cases like trademark infringement.
For registering a person or company as a registered user of any registered trademark or a licensee, the Form TM-28 is to be filed with the concerned Registrar of Trade Marks, jointly by the registered owner or proprietor/licensor of the registered trademark and the proposed licensee or the registered user. The Registered User Agreement/License Agreement will be one of the many documents and enclosures to be submitted to the registrar for this purpose. Also, the application for this purpose is to be made within Six Months from the date of the finalization of such an agreement between the licensor and licensee. Such an agreement must cover the specified period of licensing, and the mutually agreed terms and conditions of licensing. After getting fully satisfied with the contents of the License Agreement, the Registrar will then publish the related information in the Trade Marks Journal within two months, to ensure 'No Objections' from all other people and entities located in India or abroad.
Interested Indian people or companies in availing our legal services for making licensing or assignment of any registered trademark in India (or abroad), may call over: +91-8800-100-281; or mail all relevant information to: Contact@TrademarksIndia.net.