INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
an authority specified in any law for the transmission of money overseas must be produced. Partial Assignment Both trade marks and copyrights in India can be par - tially assigned, subject to the conditions of clarity, proper documentation, and compliance with statutory requirements. Both copyright and trade mark rights are transmissible upon the death of the owner. Legal heirs or succes - sors must take appropriate legal steps, such as reg - istering the transmission of rights or ensuring compli - ance with succession laws, to secure ownership of the intellectual property (IP). 6.2 Licensing Requirements or Restrictions In India, licensing can be governed by specific terms under applicable laws, including the Copyright Act 1957 and the Trade Marks Act 1999. Below is an over - view of licensing requirements, types and important clauses to consider. General Licensing Requirements Trade mark licensing: Registering a licence with the TMO is not mandatory but highly advisable. A reg - istered licence grants the licensee statutory rights of action in case of infringement. Key clauses in a licence agreement include: • Quality control monitoring: Ensures that the licen - sor maintains quality standards associated with the IP. • Trade mark usage: Specifies the permitted use of the trade mark or copyrighted material. • Grant clause: Defines the scope and nature of the licence. • Indemnity clause: Protects the licensor from liability arising from misuse by the licensee. • Termination clause: Outlines the conditions under which the licence may be terminated. Types of Licences For copyrights (Copyright Act 1957): • Exclusive licence • Non-exclusive licence
For trade marks (Trade Marks Act 1999): • Exclusive licence: The licensee has exclusive rights to use the trade mark for the licensed goods or services. The owner cannot use the trade mark or grant licences similar to those of others for the same goods or services. • Non-exclusive licence: Allows the licensor to license the trade mark to multiple licensees while continuing to use it themselves. Perpetual Licences A perpetual licence is defined as one that remains valid indefinitely, provided it is explicitly stated in the agreement. • Copyright: A licence cannot exceed the term of the copyright (lifetime of the author plus 60 years for literary, dramatic, musical or artistic works). • Trade marks: Perpetual licences are allowed, sub - ject to the condition that the trade mark registration is renewed every ten years to remain valid. Archival Rights • Copyrights: Licences can include archival rights, allowing the licensee to store, reproduce and retrieve the licensed material for specified pur - poses. These rights must be clearly defined in the agreement. • Trade marks: Although archival rights are less relevant for trade marks, agreements may include provisions for maintaining historical usage records. Licensing of Applications for IP IP applications, such as patents, trade marks, copy - rights and designs, can be licensed even before reg - istration is granted. Licensing of applications must comply with applica - ble laws and may include restrictions or conditions to protect the interests of the applicant and the licensee. Conclusion Licensing IP in India offers flexibility for both licensors and licensees, provided the agreements are drafted with care and attention to legal requirements. Regis - tering licences, especially for trade marks, is advisable to ensure stronger enforcement rights. Additionally,
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