Trademark Assignment & Licensing
Assignment of Trademark
Assignment is done by the holder of the trademark to any other person on a valid consideration. According to § 38 of the Trademarks Act, a registered trademark can be assigned and transmitted, whether with or without the goodwill of the business concerned. It can be done for all the goods and services for which trademark is registered or only for a part of the goods and services. An unregistered trademark may be assigned or transmitted with or without the goodwill of the business concerned.

A restriction is placed upon assignment and transmission when as a result of such assignment or transmission the exclusive rights to use the trademark vests with more than one person in respect of the (i) same goods and services; (ii) same description of goods or services; (iii) goods or services or description of goods or services which are associated with each other.

A trademark is also not assignable where a circumstance would subsist that the exclusive right to use the trademark for goods or services is with a person in any place in India and an exclusive right to use a trademark nearly resembling that of first one in relation to the (i) same goods and services; (ii) same description of goods or services; (iii) goods or services or description of goods or services which are associated with each other. An exception to this rule is if an application by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said right would not be contrary to the public interest may approve the assignment or transmission.

The person who proposes to assign the trademark may apply to the Registrar with a statement of cause setting out the circumstances. The Registrar may issue a certificate stating whether, having regard to the similarity of goods and services and of the trademarks, the proposed assignment would be valid or not.

Where a person becomes entitled by assignment or transmission to a registered trade mark he shall apply in the prescribed manner to the Registrar to register his title. On proof of title, the Registrar shall register him as the proprietor of the trademark.

Trademark Licensing
Trademark licencing is the process where the proprietor of the trademark lets another person use his trademark. It may be done via a written or an oral agreement, although a written agreement is preferable. The proprietor of the trademark in such circumstance is called the ‘licensor’ and the person to whom such permission to use the trademark is give is called the ‘licensee’.

The licensee has the duty to specify the legal name, geographical location, etc. of the licensor in anyplace the trademark is being used. The licensee must ensure that standards are maintained in whichever goods/services the trademark of the licensor is used. The quid pro quo over here is that the licensee gets the permission to use the trademark and the licensor gets royalties, a percentage of the profits, etc.

There are 3 most common types of licencing agreements. Exclusive agreements where the licensee has the exclusive rights to use the trademark and the licensor has no commercial rights but gains profit from the agreement with the licensee. In sole agreements, the licensor and the licensee only can use the trademark. In non-sole agreements the licensee/licensor can give the right to use the trademark to anyone.

The most common examples of trademark licencing can be seen in video games such as FIFA and Need for speed where the names of the football teams and the brand of the cars are used respectively which are trademarks. The use of trademark in merchandise such as dress and toys are also examples of trademark licencing.

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