Trademarks Licensing and Assignment in India

What is the difference between licensing and assignment of Trademarks in India ?

Trademark Licensing in India

A trademark license can be defined as an agreement whereby the trademark owner authorizes another person or persons to use a mark. A trademark license usually, but not necessarily, contains several conditions such as exclusiveness,  consideration, quality standards, the way  in which the trademark may be used and consideration, quality standards, the way  in which the trademark may be used. Recordal of trademark Licensing is not mandatory in India. If the mark is registered then a Registered User Agreement can be recorded with the Registrar of Trademarks. It is advisable to record the registered user agreement, as the User may not be able to initiate any Legal proceedings independently. The Trademark License is given for a specific period of time, at which the Trademark owner can transfer certain rights to a third party by way of License. Trademark License is given for a specific period of time, at which the Trademark owner can transfer certain rights to a third party by way of License.

Trademark Assignment in India

An assignment is a transfer of ownership of a trademark application or trademark registration from one entity to another. Section 2(b) of the Trademark Act 1999 describes an assignment as assignment in writing by the act of the parties concerned. Section 37 of Trademark Act gives the right of a registered proprietor to assign the Trademark for any consideration. The Trademark on being assigned gives the complete right over the mark to the assignee. Recordal of assignment with the Trademark Registry is compulsory in India. Recordal of assignment becomes compulsory as there is change in ownership of the Trademark, and all the rights of the mark automatically devolve to the new owner.

The difference between Trademark Assignment and Trademark License are:-

1. Assignment of a Trademark basically means selling the complete ownership. Licensing of Trademark means renting of the Trademark.

2. The assignment deed must be compulsorily in writing. License is not required to be in writing.

3. Assignment of Trademark can be made wholly or partly, License is giving the rights for a specific period of time

4. Assignment of trademark is not time sensitive, ones assigned the ownership is completely gone. Licensing is only for a limited period of time.