The process where in the owner of a trademark authorizes the third party to use his mark for a consideration is called Trademark Licensing. The owner of the intellectual property who grants the license is known as a licensor and the person to whom the license is issued is known as a licensee.
One significant point to be noted in trademark licensing is that the ownership rights of the trademark are exclusively conferred with the owner and only some rights related to the trademark are given to the licensee. One of the biggest advantages associated with trademark licensing in India is that it allows the business entities to expand the market for their product.
Procedure for licensing a trademark -
A registered trademark can be licensed by following the below mentioned procedure -
- An application for recording the licensing agreement shall be made within six months from the date of entering the agreement.
- The licensor and the licensee are required to make an application jointly in prescribed form.
The proprietor must also submit an affidavit specifying -
- The particulars of the relationship between him and the licensee
- The control that he holds over the use made by the licensee
- The extent to which the licensee can make use of the trademark
- The terms and conditions of the use
- Period of permitted use, or any other relevant matter.
- When the Registrar is satisfied with the application and the particulars entailed in it, the licensee or the proposed user of the trademark would be duly registered. The date on which the application for registration was submitted would be entered in the register and from this date only the licensee would become a registered user of a trademark for the third parties. The particulars of the relationship between the licensor and the licensee would be recorded in the Trademarks Journal within two months from the date of registration.
Cancellation of Trademark Registration -
The registration granted to a person can be canceled under section 50. Trademark Registration is canceled when the registered holder is using it in a way that is not in accordance with the terms of the agreement or in case the user has misrepresented the details related to the registration. Further registration can also be canceled if there is a lapse in the agreement regarding the quality of the goods thus enforced.
He must submit an application electronically in prescribed form at the Common Portal within 30 days from the GST implementation date. The proper officer will, after conducting enquiry, cancel the said registration.