Trade Mark Licensing in India
The licensing of trade mark means permitting others to use the mark without transferring the ownership of trade mark. The same may also done for all or some of the goods or services covered by the Act. In Trade Marks Act, 1999 the term mentioned as ‘Registered user’ instead of ‘Licensing of trade mark’.
Trademark licensing benefits to both the parties. The licensor enjoys the right to royalty whenever the mark used. The licensee expands its market operations by using the brand and developing its reputation.
In case of Licensing, the licensor licenses the rights over the trademark in manner he thinks fit. The Licensor can restrict the rights of the licensee in a trademark or brand with respect to the products or services. Wherein the licensee can use such brand, with respect to time for which it can use such mark, with respect to area within which it can use such mark etc.
Procedure for licensing Trade Mark (section 49)
Following describes the procedure for licensing a Trade mark under section 49 of Trade Marks Act, 1999 :
1. The Act needs a person to register as registered user of Trade mark. The registered proprietor and also the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner. Every such application shall have attachment of :
- the agreement entered between the registered proprietor and the proposed registered user regarding licensing of Trade mark. It must be in written form.
- an affidavit made by the registered proprietor or also by some person authorized to the satisfaction of the Registrar to act on his behalf :
- giving particulars of the relationship between the registered proprietor and the proposed registered user. Including particulars showing the degree of control by the proprietor over the permitted. Whether also term of their relationship that the proposed registered user shall the sole registered. Details about any other restriction as to persons for whose registration as registered users applications.
- stating the proposed registration goods or services.
- also such further documents as required by Registrar.
- stating the conditions or restrictions proposed with respect to the characteristics of the goods or services, to the mode or place of permitted use, or to any other matter.
- stating duration of licensing if mentioned.
2. When all requirements complied with, the Registrar shall register the proposed registered user in respect of the goods or services.
3. The Registrar shall issue notice in the prescribed manner to other registered users of the trade mark if any. The notice contains details of registration of a person as registered user.
4. The Registrar shall, if so requested by the applicant, take steps for securing that information given for the purpose of an application under this section (other than matters entered in the register) is not disclosed to rivals in trade.
Right to registered user to take proceedings against infringement
1. There should subsist a agreement between the parties. Then a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor. The registered proprietor becomes defendant and the rights and obligations of such registered user in such case being concurrent with those of the registered proprietor.
2. A registered proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.