Trademark Assignment and Licensing
Trademark licensing is a process of authorizing another person or company for using the rights of the owner as of the registered user for a specified period of time upon the mutually agreed terms and conditions. In consideration, the owner will receive the royalty from the licensee. Section 48 of the Trade Marks Act, 1999 states that the provision of the licensing of the trademark.
Another important aspect is that of the transferring of rights. Only some rights are given with regards to the licensed trademark and the exclusive rights pertain with the owner itself. Section 37 deals with the power of a registered proprietor to assign the trademark and service mark. An unregistered trademark may also be assigned or licensed by the owner of the trademark.
In both the licensing and assignment of the trademark, the rights of the owner are transferred to a third party but they are different from each other in some aspects.
- The basic and foremost difference is that of the tenure. The period of licensing is time-bound agreement, whereas the assignment is selling your trademark with the exclusive rights of ownership.
- The assignment deed is mandatory in written, whereas a licensing may not require an agreement in written form.
- It is necessary to update the record of the assignment of your trademark with the trademark registry. On the other hand, such a record is not compulsory in case of licensing.
An assignment can be done in different forms; however, in every assignment, a complete transfer of rights and title in the mark will be there. A registered trademark can be assigned with or without the goodwill of the business concerned. Similarly, the trademark can be assigned in respect of all the goods or services for which the trademark is registered or only some of those goods or services. Section 49 of the Act deals with the procedure of the licensing of the trademark. A trademark cannot be assigned where as a result of the assignment or transmission exclusive rights in more than one person would be created.
The first step includes the filing of the Form TM-28 jointly by the registered owner and the licensee with the concerned Registrar of Trademarks. The Registrar on being satisfied that the assignment is genuine shall register the name of the new proprietor. An assignment of the trademark can be done by an Assignment Deed in which the owner of the trademark assigns his right on the trademark for a certain consideration to a third party.
Also, the application for the licensing 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 license. 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.
Assignment and licensing both if strategize properly can be used to develop the brand.