Trademark could be any word, phrase, or symbol, which might represent a specific company or product. Trademark basically distinguish the products or services of one company or organization from the other competitor companies may provide. There are some examples of trademarks which include acronyms (like NBC, IBM) and extend to slogans, stylized fonts, and even colours.
According to section2 (1) of the Trademarks Act, 1999, “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. This is the definition given by the Act itself.
Trademark gives a service or organization or any product its legal unique recognitions.The trademark can be used to refer to both goods and services. For services it also is addressed as a Service Mark.
TRADEMARK LICENSE :-
There is no specific definition for the term “Licensing of Trademark” in the Trademarks Act, 1999. License is basically a general is the permission or approval given to individual, company or organisation to do the particular work.
Trademark License in a simple meaning is permission granted by the owner of the trademark to a third person. Such a license is granted in consideration of a Royalty.
PROCESS FOR REGISTRATION OF A TRADEMARK LICENSE:-
A Registered User an individual who is for the time being registered under sec 49 of the Trademarks Act, 1999. Here the Registered User is the Licensee.
Section 2(1)(r) of the act defines permitted use of a Trademark. It means the utilization trademark by-
1. by a registered user of the trademark in respect to goods or services
i. with which he’s connected within the course of trade: and
ii. in respect of which within the trademark remains registered for the given time being and
iii. That he is registered as a registered user and
iv. which complies with any conditions or limitation to which
the registration of the registered user is subject: or
2. by an individual apart from the registered proprietor and registered user in respect to goods or services
i. with which he is connected within the course of trade and
ii. in respect of which the trademark remains registered for the time being: and
iii. by consent of such registered proprietor in a written agreement and
iv. which complies with any conditions or limitation to which such user is subject and to which the registration of the trademark is subject”
The registration of a TM license agreement isn’t mandatory under the law. But registration always necessary as it forms a record/ evidence in possible future disputes. In case of proceedings for the trademark infringement as per the Trademarks Act, 1999 or legal actions only a Registered owner/ Proprietor of the Trade Mark would consider competent. If a User is not registered under the act then he cannot maintain the suit under the Act.
Therefore, to register the trademark license
1. The agreement shall be in writing;
2. The owner of the TM and also the proposed user should together apply for registration (sec- 49) to the Registrar of the Trademarks jointly;
3. The application is to be made in Form TM-U;
4. An affidavit authenticated- by the proprietor of the TM including the details of the license mentioning the following-
I. Relationship between the parties.
II. Duration of the usage.
III. Goods/services for which it is applicable
5. The government fee of Rs- 4500 for each mark shall be paid.
The use of a registered trademark can be permitted to a registered user as per the provisions of the Act and for that purpose, the registered owner of the Trade Mark must enter into an agreement with the proposed registered user.
The application for registration shall be made within the 6 months from the date of formation of the agreement between the parties. The Trademark Office (TMO) will further register the user if it finds everything satisfactory. The user will then become a “Registered User” of the trademark afterwards.
The Trademark office (TMO) will publish it in the Journal and send an intimation to both the trademark owner and the other registered users of the same trademark. In case, the TMO is not satisfied with the contents of the application, a hearing can be appointed where the parties would be given a chance to correct the deficiencies together.
HOW TO LICENSE A TRADEMARK ?
1) Make a Licensing Agreement: A licensing agreement is important to laying down the terms and conditions of the use of a trademark. There are some key elements that can be made a part of the agreement subject to special needs and circumstances of the parties include.
2) Register your Licensing Agreement with the Registrar of Trademarks: Although the third-parties are allowed to use trademarks if they are permitted by the owners of the trademark. To consolidate the legal position of parties involved, it is advisable to get the license agreement recorded with the Registrar of Trademarks to have absolute ownership on it.
WHO CAN GRANT TRADEMARK LICENSE?
In trademark licensing, a trademark owner (Licensor) grants permission to another (Licensee) to use that trademark on mutually agreed terms and conditions. Trademark licensing was considered impossible at one time given that one of the functions of a trademark was to indicate source.
Trademark allows brand owners to take maximum economic benefits of the goodwill of their brand without having to invest in infrastructure for marketing of their products. It ensures them of a regular stream of revenue on account of regular receipt of royalties from the licensee of the trademark.
BY: ALISHA BAWA