Trademark Licensing

Under the Trade Marks Act 1999, the person who has been entered in the register kept in the office of the Registrar of Trade Marks, as the proprietor of that particular trade mark, shall have the power to assign or license the trade mark to any third party for consideration of such assignment/ licensing. A registered trade mark can be assigned with or without goodwill of the business concerned. Similarly the trade mark can be assigned in respect of all the goods or services for which the trade mark is registered or only some of those goods or services.

An unregistered trade mark may also be assigned or licensed by the owner of the trade mark.

Where a person has been given an assignment of registered trade mark he may apply to the Office of the Registrar of Trade Mark to register his title as the proprietor of the trade mark in respect of goods and services for which the assignment has been granted.

The Registrar on being satisfied that the assignment is genuine shall register the name of the new proprietor.

An assignment of the trade mark can be done by an Assignment Deed in which the owner of the trade mark assigns his right on the trade mark for a certain consideration to a third party.

A trade mark cannot be assigned where as a result of the assignment or transmission exclusive rights in more than one person would be created. Such rights may be in relation to same goods or services, same description of goods or services which are associated with each other and the rights are in respect of trade marks nearly resembling each other and the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion.